This interesting decision raises the question of the expiry of a domain name when a dispute is underway before a UDRP panel; does the original registrant remain the registrant and does it also remain as the Respondent? If not, who is the proper Respondent?
The case is Michael Aiduss LLC v. UDRP Compliance / UDRP Pending Renewal (Claim Number: FA1403001549535) and it will be seen immediately that the Respondent is not what we are used to seeing, as it does not seem to be a party, but more a concept. How has this come about?
Complainant had engaged a company called Pingable Inc, to provide technical support services for its website. Pingable, without authorisation, had registered itself as the registrant of the domain name <michaelaiduss.com> and , when the parties went their separate ways, refused to transfer the domain name to the Complainant, its principal.
The substantive issues were not unique and the Panel had no trouble in finding for the Complainant on the standard 3 elements, that the domain name was identical to the registered USPTO trademarks and common law rights of the Complainant; that Pingable Inc had no rights or legitimate interests in the domain name and that Pingable Inc’s registration of the domain name in breach of its agency, trust and fiduciary duties to its principals was bad faith registration and use.
However, before those findings were made, procedural issues arose because the domain name’s registration was due to expire one day after the Complaint was filed and therefore during the proceeding. Pingable could have renewed the registration at some point during the proceeding, but if it did not, it would no longer be the domain name holder, and hence could no longer be the Respondent against whom an order for transfer could be made. In fact, Pingable Inc did not renew its registration of the disputed domain name on or before the expiration date, or at all. So at that point, on the expiration of the domain name there was no registrant of a current domain name and, potentially, no Respondent. What should the Complainant do, to hold onto its Respondent or at least a Respondent?
The answer is in ICANN’s Expired Domain Deletion Policy (EDDP) paragraph 22.214.171.124.7, which enabled the Complainant to renew the registration so that there would be a registrant and hence a Respondent. It could hardly renew in its own name and would not want to renew it in the name of the original Respondent, Pingable. In accordance with the EDDP, it therefore registered the domain name in the name of the registrar pending the outcome of the proceeding. This Policy, which is incorporated into the current Registrar Accreditation Agreement with ICANN, essentially grants a complainant in a UDRP dispute the option of renewing or restoring a domain name (under the same commercial terms as the registrant) in cases where it faces deletion or expiry during the course of the dispute. If the complainant does so, the domain name is placed in Registrar HOLD and Registrar LOCK status, the WHOIS contact information for the registration is removed, and the WHOIS entry is amended to indicate that the domain name is subject to dispute.
If the complaint is successful and obtains an order for transfer, the transfer would be to the Complainant and the proceeding will then have been successful.
If the proceeding were terminated or there were a finding against the Complainant, the domain name would be deleted after 45 days.
The Complainant’s interest would therefore be better served by renewing the registration in the name of the registrar; hence the unusual description of the Respondent.
At this point, there was therefore a registrant and a Respondent and, provided the evidence was there, the Complainant had prospects for success and the transfer of the domain name to itself. But against whom should the Complainant make its allegations; Pingable as the former registrant and Respondent or the registrar under the guise of its description set out above, as a sort of nominal Respondent. Clearly it would have been highly artificial to make these or any other allegations against the registrar, as it had nothing to do with the rights and wrongs of the registration until it became the nominal Respondent.
A practical solution was sought, as the only way for the Complainant to establish its case was by relying on the former registrant, Pingable’s conduct and its unauthorised registration of the domain name in its own name.
The panel took the view that the Complainant was right in relying on Pingable’s conduct and that conduct enabled the Complainant to prove its case. Having done so, the Panel concluded that the case had clearly been made out and ordered the transfer of the disputed domain name to the Complaint and that that order be complied with by the registrar.
A practical solution all round.
* The proprietor of this website was the Panellist in this dispute.