In a WIPO decision today a sole panelist denied a trademark holders complaint to transfer a domain that matched its trademark , even through the domain was used to spoof the official site of the trademark holder with the same look and feel of the trademark’s holders page.
The domain in question is Validas.com
The trademark did not exist when the domain was registered but the domain was spoofing the trademark holders official site at myvalidas.com.
The panel found that the domain owner:
“Used the disputed domain name since December, 2008 intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on its website.
Yet the panel found for the domain holder
So it appears to WIPO that spoofing a trademark holders site is a better use than a parked page.
That’s some scary stuff.
Remember there have been quite a few cases that have been decided that bad faith can be shown to exist not only at the time of registration but by use of the domain, usally when a parking page is involved.
Here the panel noted:
“Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations”
“”Despite this long and consistent line of cases, some recent decisions have expressly espoused the idea that subsequent bad faith use may, in certain circumstances, support a finding of bad faith registration; or, as some other Panels have put it, the idea that bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder.””
“”There appear to be two strands of reasoning advanced to support the above idea””
“”The first is that insufficient attention has been paid to the registrant’s representation and warranty in the Policy, paragraph 2, that “you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights”.
“”This has been said by some panels to support the propositions that (a) the registrant has a duty to conduct an investigation at the time of registration, and (b) even though the domain name was registered in good faith, subsequent breach of the warranty “may be deemed to be retroactive bad faith registration”
“”If a party uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, this may be deemed to be retroactive bad faith registration.”
“Under paragraph 4(b)(iv) of the Policy a respondent that uses the domain name to attract Internet users to its website or online location by creating a likelihood of confusion with the complainant’s mark and its sponsorship of the website is acting in bad faith, without reference to the respondent’s state of mind at the time that the registrant registered the domain name. Clearly, as under the Telstra analysis, in this Panel’s view bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder, just as bad faith use can occur without regard to the fact that the domain name at issue has not been (or has been “passively”) used.”
“”As this Panel sees it, this line of reasoning involves interpreting the Policy, paragraph 4(b)(iv) as deeming the particular form of bad faith use there described to constitute both bad faith use and bad faith registration. In fact the paragraph merely deems such use to be “evidence” of bad faith registration and use,
“”In this Panel’s opinion, the result of the reasoning in these recent cases would in effect turn “and” into “or”, which would be inconsistent on its face with the plain meaning of those words.””
“Those recent attempts have clearly been motivated by a laudable desire to provide a remedy under the Policy and to do justice in the very small number of cases in which the rights of a trademark owner are being abused by the perceived bad faith use of an identical or confusingly similar domain name, in which the registrant has no rights or legitimate interests, but in which it seems that the domain name was registered by the respondent in good faith. To this extent, these decisions accord with the purpose of the Policy, namely to address the fundamental problem which is cybersquatting.””
This panelist actually was correct in denying the complaint as he followed the Policy correctly. Spoofing the TM page is most certainly an egregious violation, but that is not within the scope of the UDRP process to transfer the name based on that alone. This case should have gone to a proper court and the Registrant would have been spanked properly for that, IMO.
The part of this decision that worries me more than anything is that the Panelist seems to be alluding to a push to actually change the wording in the UDRP from “and” to “or”, which would completely rape the system even further…
“It remains to be seen whether the recent cases which have explored a reinterpretation of paragraph 4(b) to the effect that a finding that good faith registration may be turned “retroactively” into bad will be taken up generally by panels. Those recent attempts have clearly been motivated by a laudable desire to provide a remedy under the Policy and to do justice in the very small number of cases in which the rights of a trademark owner are being abused by the perceived bad faith use of an identical or confusingly similar domain name, in which the registrant has no rights or legitimate interests, but in which it seems that the domain name was registered by the respondent in good faith. To this extent, these decisions accord with the purpose of the Policy, namely to address the fundamental problem which is cybersquatting.
In the view of this Panel, the only permissible way for this to be achieved is for ICANN to amend the Policy, paragraph 4(a)(iii) by changing “and” into “or”. Until then this Panel believes that (unsatisfying as it may be in its practical effect in the small number of cases in which it has been an issue) the view should prevail,… that “registration of a domain name that at inception did not breach [Policy] 4(a)(iii) but is found later to be used in bad faith does not fall foul of [Policy] 4(a)(iii)”. This Panelist concurs in this regard…
In the present case, as to paragraph 4(b)(i), because the disputed domain name was registered more than seven years before the first use in commerce of the Complainant’s trademark, this Panel does not accept the proposition that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to one of its competitors. Indeed, this circumstance and the absence of evidence in these proceedings that, at the time of registration, the Respondent was aware of the Complainant’s existence (although such possibility cannot be entirely excluded), lead to the conclusion here that the registration of the disputed domain name in 2000 was not in bad faith.
“In this Panel’s view, until the Policy is amended,…” <<THAT is what should scare you.
As much as this Respondent deserved to get his ass kicked, this panelist did the rare thing and actually followed the Policy instead of going completely off the reservation like some other rogue panelists have done to get around the purposeful and very meaningful "AND" language. Obviously though, the Panelists would very much like to see that changed to an "OR". Should that come to pass, prepare to be pillaged.
Wow……this panelist is saying contradicts himself there at the end your post.
He basically is saying that what some of these recent decisions in which they ignored the UDRP rules and overlooked the “and” requirements of the UDRP to do what is ultimately right, irrespective of the rules.
How ridiculous. Now he’s are jumping on the the “feeling-based” UDRP decision making process.
I’d swear these guys are corrupt b/c they are trying to change the process to allow anything to pass. They have to be biased towards trademark interests or they would not think like this. Where is the consistency in these decisions? Where is the following regulations in accord with the UDRP process?
On the other hand, myvalidas(dot)com site looks like a one-day project. It is even not in the Alexa Global 1,000,000.
Anyone else could go for domains like thevalidas(dot)com, validasetc(dot)com and file with WIPO.