Recent Case Notes & Commentary

Must Bad Faith be Proved Both in Registration and Use?

What About in the Case of a Renewal of Registration?


It might be right or it might be wrong, but that is what it says and one would have thought that was what it meant.


Mummygold

Recently, however, that view has been put under challenge. The main source of the challenge has been City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, (WIPO Case No. D2009-0643) known popularly as Mummygold, as it concerned the domain name <mummygold.com>. In essence, the view was expressed in Mummygold that the notion of the requirement that a domain name was “registered and used the domain name in bad faith” was a “unified concept”. Accordingly, registration might be established “retroactively” by bad faith use that occurred after registration.


Mummygold has been followed in several other UDRP decisions, such as Phillip Securities Pte Ltd v. Yue Hoong Leong, (ADNDRC Decision DE-0900226); and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, (WIPO Case No. D2009-0786 (“Octogen”); Denver Newspaper Agency v. Jobing.com LLC, NAF Claim No. 1282148; Ville de Paris v. Jeff Walter, (WIPO Case No. D2009-1278); Country Inns & Suites By Carlson, Inc. v. Shuai Nian Qing, La Duzi, (WIPO Case No. D2009-1313).


But other decisions have expressed a different point of view; thus Validas, LLC v. SMVS Consultancy Private Limited (WIPO Case No. D2009-1413) did not follow Mummygold.


Sporto

Now, another panellist has expressed “skepticism” about the Mummygold approach. That view has come from Eastman Sporto Group LLC v. Jim and Kenny, (WIPO Case No. D2009-1688) concerning the domain name <sporto.com>.


It is important to look closely at the facts in that case.


The Complainant made and sold footwear and other products under the name SPORTO. It held trademarks for SPORTO going back to the 1960s and claiming use in commerce since 1951.


Respondent registered the disputed domain name in 1997 and used it for a website from 1998 for training classes that it offered.


From 2001, the site contained statistical data on stream flow conditions. In 2004 the site read: “THIS DOMAIN HAS JUST BEEN REGISTERED FOR ONE OF OUR CUSTOMERS! DOMAIN REGISTRATION AND WEBHOSTING AT MOST COMPETITIVE PRICES! [signed] 1&1 Internet Inc.”


The site’s content from November 2006 through September 2007 was unknown. From that time, there was no content.


However, during that period, the site resolved to a generic pay-per-click site offering links to shoes and footwear identified as Sporto products, with its name and logo (including a distinctive graphic design that is part of some of Complainant’s trademarks) is displayed prominently. The Respondent did not have a licence from the Complainant to sell its products or use its trademarks. On August 21, 2009 it offered to sell the domain name to a third party for USD100, 800.


The registration of the domain name had been renewed in 2009.


The use of the domain name to sell the Complainant’s goods in 2006-7 without a licence might be thought to show bad faith use by the Respondent. But was there bad faith registration, when, at the time of the registration in 1997, the Respondent did not seem to be interested in the Complainant at all?


The panellist in Sporto expressed “skepticism” about Mummygold and went on to say that there had at least to be an act of bad faith after registration that enabled an inference to be drawn of the Respondent’s bad faith at the time of registration. If that inference could not be drawn, the Complainant had not shown what he was required to show under paragraph 4(a) (iii) of the Policy, i.e. registration and use in bad faith.


The panellist might therefore have been on the way to dismissing the Complaint, for if bad faith registration was necessary and it had not been shown, the Complainant had failed to prove an essential element.


Renewal of registration of the domain name

However, this case was also a case where the registration of the domain name had been renewed and where the use to which it had been put had varied a lot between the time of the original registration in 1997 and the time of the most recent renewal of the registration in 2009.


For that reason, the panellist went on to look at the provisions of paragraph 2 of the UDRP which imposes on the registrant representations made at the time of registration and also at the time of a renewal of the registration that, to its knowledge, the registration of the domain name would not infringe upon or otherwise violate the rights of any third party.


Until now, the prevailing view had been expressed in Teradyne, Inc.Teradyne, Inc. [sic] v. 4Tel Technology, (WIPO Case No. D2000-0026) that the renewal of a registration was not a registration for the purpose of showing registration in bad faith and that proof of bad faith at the time of the registration itself was required.


Sporto now casts doubt on that view and takes the position that a transfer “in some cases” may be “a new or fresh registration” and that “treating a renewal the same as a registration comports with the language – very plain and direct language – of paragraph 2.”


The decision then goes on to say that by the time the domain name in the present case was renewed in October 2009 the Respondent was engaging in cybersquatting because of its changed use of the website and thus it was then acting in bad faith and had not subsequently used the domain name legitimately.


Teradyne qualified

Accordingly, the panellist maintained that it was reasonable to give “ the plain language of paragraph 2 equal standing with the plain language of paragraph 4(a)(iii)” and by that means qualifying the operation of Teradyne.


Following such a course on the facts of Sporto enabled the panellist to conclude that the date to decide if the domain name had been registered and used in bad faith was the date of the renewal in 2009 and not the time of the original registration in 1997.


Applying the facts to the former date, the panellist was able to conclude that “the Respondent registered and used the disputed domain name in bad faith.”(emphasis added).


The Panel further found that Respondent’s use of it to redirect to a website that includes hyperlinks to Complainant’s competitors was not legitimate under paragraph 4(a) (ii) of the Policy.


Despite the complexity of the argument on this subject, one thing is clear and that is that the future debate on this issue will be interesting.