A UDRP decision handed down today shows why the UDRP system is still a mess and why we get some many bad decisions.
The UDRP system has been handing down decisions for over 13 years and today’s case points out panelist still disagree on the meaning of 1 of the 3 elements required to prove a UDRP claim bad faith and what the language of the rule means.
Writing for the majority In the case of Guru Denim Inc. which found in favor of the domain holder of truereligion.com;
“There are broadly two views of the interpretation of the requirements for bad faith under the third element of the Policy, namely the “unitary” and the “conjunctive” views
“The majority’s view of registration in good faith is only reinforced by the exceptional circumstance in this case that the Respondent made an apparently bona fide noncommercial use of the domain name for ten years after registration. ”
“It was only after this time that the Respondent started taking advantage of the opportunity to earn pay per click type advertising income from the increasing amount of Internet traffic seeking out the Complainant’s business and website. ”
“Even though the Respondent’s subsequent use might be considered to be a diversion of Internet users for commercial purposes in terms of paragraph 4(b)(iv) of the Policy, the majority, similar to the approach of the panel in the Validas decision, does not consider that this provision can be interpreted to deem evidence of use in bad faith as evidence of both registration and use in bad faith in circumstances that there is clear evidence of good faith registration.”
By its own rules WIPO UDRP Panels, panelist don’t have to follow the WIPO overview rules nor prior UDRP decisions:
“While predictability remains a key element of dispute resolution systems, neither this WIPO Overview nor prior panel decisions are binding on panelists, who will make their judgments in the particular circumstances of each individual proceeding. ”
A ridiculous way to run a legal process.
On the issue of bad faith WIPO rules say:
“Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”"
Makes perfect sense
However in this UDRP the Dissenting Panelist, Scott Donahey says:
“the plain literal meaning of the third element of the Policy is that both registration and use in bad faith must be found individually before the requirements of that element are fulfilled.”
The majority begins the defense of the majority position on bad faith with the statement:
“Suffice it to say here that the majority subscribes to the “conjunctive” view or in other words that the plain literal meaning of the third element of the Policy is that both registration and use in bad faith must be found individually before the requirements of that element are fulfilled.”
This panelist (Mr.…
