It was generally considered that if you registered a domain, say in 1998, and a company came along in 2008 with a trademark, you could easily show there was no bad faith in the registration unless you could foresee the future. Of course you have to pay attenion to your domain names at all times, someone who registered a domain in 1998 and then paid attention in 2008 to a new company and changed their keywords on a parked page could have a problem if they knowingly did this.
BidPal went on to lose the UDRP as the three member panel decided, Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
So now BidPal is taking this to court with a different strategy, Mr Levine wrote:
The losing complainant in a year-plus old decision has just filed a federal complaint alleging as it did in the UDRP proceeding that (in effect) it has a better claim to the domain name than does the holder. BidPal, Inc. v. InterMediaOne, FA121000146833 (Nat. Arb. Forum December 14, 2012). Its federal action was filed February 5, 2014, 14-cv-00168 (S.D. of Indiana). The UDRP decision was by a unanimous three member Panel. Complainant alleged that the “disputed domain name simply resolves to a placeholder page with the Registrar and contain no original content. The Panel’s unsurprising response to this is that “even if [the Respondent] had not been able to prove the use of the Disputed Domain Name, [it] finds that it is not considered a violation of the Policy just to register a domain name and not give it an active use.”
In the federal action, the plaintiff takes a new tack: “The Infringing Domain Names were Registered and/or Renewed in Bad Faith.” The consensus under the UDRP is that renewal does not equal registration but is a continuation of it. There appears to be a split on this issue under the ACPA between the Third and Ninth Circuits. See Twitter, Inc. v. Geigo, Inc., D2011-1210 (WIPO November 2, 2011) (3-member Panel).An unresolved issue is whether the renewal of a domain name initially registered before the existence of a trademark–therefore no bad faith–is subject to forfeiture after renewal of registration for subsequently using the domain name in bad faith. There are several circuit decisions that have found for the owner where the trademark predated a disputed domain name that was originally registered and used in good faith but was subsequently used in bad faith, then renewed.
This will be a case to watch with great interest for domainers and IP lawyers alike.