Fairwinds: Time For UDRP Reform To Change Bad Faith Requirement From Registration Date To Renewals

Fairwinds Partners, which also heads up the Collation Against Domain Name Abuse (CADNA) has weighted in on the recent UDRP decision on Big5.com and whether the bad faith for a domain holder should be judged from only at the time the domain was first registered or acquired or each time the domain name was renewed on its blog today.

Domain investor Nat Cohen wrote an excellent analysis of the issue on  domainarts.com, last week and I highly recommend that all domain holders take the time not only to read the post but to understand the issue.

Why?

If you read Fairwinds post today, they are calling for UDRP reform but not to help domain holder, s but rather to make the test of bad faith one that is judged everytime the domain name is renewed.

In the Big5.com case the panel found the domain holder registered the domain is good faith which was years before the trademark was registered, however the domain holder’s renewal of the domain was found to be in bad faith and ordered the transfer of the domain name.

Fairwinds writes:

“”The panel looked at Par. 2 of the UDRP, which states that when domain name owners register or renew a domain they “represent and warrant” that it does not infringe on the legal rights of others, such as a brand owner. Relying on this paragraph, the panel concluded that, even if the domain was originally registered in good faith, “the elements of the Policy can be studied at the time of the registration or at the time of the renewal….”

“This satisfies the long-held desire of brand owners to use the UDRP to enforce their trademarks in situations where use of a domain has turned from good to bad. But it raises the question of what the drafters of the UDRP intended by also requiring proof that a domain “has been registered and is being used in bad faith.”

“If the Big5.com panel’s conclusions are applied in other cases, could its interpretation lead to odd situations where a domain can flip back-and-forth between good and bad faith depending on how it is being used at the time of its most recent renewal?”

Rather than letting Panelists settle these thorny issues, these inconsistencies should be a matter for those seeking to amend the language of the UDRP itself after a full and open debate (after all, the thing is almost 15 years old and could use some renovation!). Perhaps it’s time to change “and” to “or” as it is used in the dispute policies of certain other country-code domains.

Comments

  1. says

    There is a logic breakdown here. If based on renewals then there is no protection for domain holders. All a RDN Hijacker would need to do is file a trademark and then according to fairwinds whishes that would trunp the domain holder’s right’s even if the domain holder registered the domain 10 years prior.

  2. cmac says

    extremely moronic. domain owners are just supposed to give up a domain any time some company gets a trademark after the fact…its almost hilarious in its stupidity.

  3. says

    So I guess we are changing rules to benefit our business model, and cause mass havoc for the entire internet, domains can be hijacked on the basis of renewal, which is basically a property tax, and not an acquisition fee.

  4. says

    There are a long set of rules for the trademark clearing house and for trademarks submitted to it

    They have priority and can apply in sunrise to get their matching trademark and would get it even if the domain was “sold” before hand

  5. says

    Let’s look at the rights of name holders. The protection of a name is often stronger than trademark protection!
    In many legislations I’m free to choose my own personal name if I don’t like my parent’s name. I can also chose to accept my spouse’s surname. An artist’s name has protection as well as the names of the category of ‘artists’ called celebrities, or when people chose to protect their identity on – or chose to connect with the vast largeness of – the internet community by choosing a pen-name.
    There’s some reason that personal names are given legal protection. I’m just guessing in my legal laymenship, but I think it’s supposed to protect the individuals ability to connect with his community, without being disturbed. It’s vital for a community that it’s members can reliably identify each other and communicate with names.
    Isn’t the internet with it’s growing social component aka Web2.0 more and more a field of interacting communities in contrast to the former predominance of companie’s commercial activities? Shouldn’t there be a reflection in jurisdiction by increasing the legal status of social interactions on the internet, because they are so vital for the global community?
    What I want to say is, there might be an argument that owning a domain could have, maybe in some unappreciated new instances, more legal weight than owning a trademark.

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