In a pretty interesting recent UDRP decision a one member panel concluded that it is not bad faith when domain owner responds to an offer to sell that is initiated by the Complainant.
You know the game.
You own a domain you believe is generic, someone sends you an offer wanting to buy the domain from you and when you respond to the offer the person who made the offer files a UDRP citing that you tried to sell them the domain as bad faith.
The UDRP was over the domain name inclusivehealth.com and the one member panel, citing the majority view of UDRP decision clearly rejected the argument that responding to an offer coming from the complainant amounted to bad faith
Here are the relevant findings of the panel:
“‘The Respondent alleges that, because the Complainant initiated the offer for the sale of the disputed domain name, the Respondent’s counteroffer does not exhibit bad faith registration and use.”
“Previous panels have determined that, when a complainant initiates an offer for the sale of a disputed domain name, a respondent’s willingness to engage in negotiations for the sale of the domain name does not equate to bad faith. ”
(See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses”); see also Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (finding insufficient evidence to hold that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) where the complainant initiated contact with the respondent and the respondent responded with an offer to sell its domain name registration for $50,000).
Therefore, the Panel finds that the Respondent’s conduct in this respect does not constitute bad fath use pursuant to Policy ¶ 4(b)(i).
The Complainant also argues that the Respondent’s inactive holding of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii) in and of itself. The consensus view of panels regarding this matter can be found in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), available at:
http://www.wipo.int/amc/en/domains/search/overview2.0/index.html#32
The consensus view is:
With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere “parking” by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).
In the present case, the mark is not well known and it is composed of two common words, “inclusive” and “health” which are commonly associated together. The Respondent has replied and has not concealed her identity. There has been no sporadic use of the disputed domain name, nor has it been parked or used to generate incidental revenue from advertising referrals.””
This makes perfect sense, as the complaining party instigates these actions, same as searching for certain keywords in parking page search boxes trying to come up with specific ads.
Corporate sleazeballs need to be put on blast.
Nice to read about something that makes sense. It’s only logical that a respondent shouldn’t be considered acting in bad faith under such a circumstance.
A bit ironic. Passive holding “may” be found as registering the domain in bad faith, while responding to an offer by the tm holder isn’t. So what is it when the tm holder inquires about the domain and the registrant responds that it’s not for sale?
It does kind of make you wonder how many domain names are being ‘taken’ this way. Both in cases like this, and the one surrounding zut.com; and not many of their owners have such good ground to work from.
Operative word there being “may”, depending on what else is presented. Of course, it can hardly be helped that some panelists aren’t exactly sympathetic towards domainers “in general”. *sigh*
The problem is that decisions at the WIPO are based on loose rules that often conflict with prior cases.
Now what we need are “without prejudice” communications to be excluded from UDRP evidence !. If anyone knows a case that rules that they are excluded then please let me know.
So NOW it is OK for owners and non owners to talk without creating legal problems?
That little scare is what has been generating a lot of UDRP and other income producing work for the IP segment of the domain industry. I realize this is for good reason when it involves crooks, but most people are not crooks. A buyer should be able to recognize that in about 3 sentences if they are dealing with a crook so if you are intelligent you should make that call before hiring a lawyer.
The best deals that were fair and both sides left happy were done by the buyer and I talking directly without worrying about legal issues in our conversation about the name’s value. That is an informal conversation, not a legal document. Again, it is only crooks who abuse that. Then get the lawyers involved to make it legal and check the details. Just saying from my experiences. Do what makes you happy.
Happy domaining!