Protect your domains in a hostile legal environment

Protecting your domains in a hostile legal environment: How to use a name? Cédric Manara Professor of law, EDHEC Businees School <cedricmanara.com>

« Use »

Last one of the UDRP conditions:

“ your domain name has been registered and is being used in bad faith” [article 4.a.(iii)]

… and in many other UDRP-like dispute resolution policies

What is this « use »

UDRP rules give no clear definition of « use »

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name (blah blah blah); or

(ii) you have registered the domain name in order to (blah blah blah); or

(iii) you have registered the domain name primarily for (blah blah blah); or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

“ bad faith use may well be implicit in the act of registering a domain name, since all of the improper purposes mentioned can be accomplished merely by passively holding a domain name” [< thyme.com >, 2000]

How do panels view the following uses?

Passive holding

E-mail service

Redirection

(Parking)

Lease

Effect of prior use before purchase

Passive holding

< ironarc.com > (2008): “The fact that the domain name does not currently resolve to an active website is not sufficient in and of itself to establish bad faith use”

Except in particular circumstances:

The complainant’s trademark is well-known

There is concealment of identity

The respondent has not answered

There is an impossibility of conceiving a good faith use of the name

[< telstra.org > (2000), one of the most cited UDRP cases]

(vanity) e-mail service

< ricard.com > (2008): bad faith use

The respondent did not use the disputed domain name solely with a vanity email service

“ The domain name was the address of a web portal which displays a list of sponsored links to third-party websites and through which the respondent receives revenue”

< chartier.com > (2004): good faith use

Vanity email services constitute a legitimate business activity

Here, there were no links on the relevant website to sites offering products in competition with those of the complainant

< soignon.com > (2004): bad faith use

“ When, according to the Record, there are only six SOIGNON surnames in the United States, none in Canada, and none in the six main cities of France, it is difficult for this Panel to see which customers would honestly want to match their profession surname and enjoy a personalized portable e-mail and website address as offered by Respondent. This Panel cannot see how this could represent bona fide commercial use of the domain name in dispute nor any use thereof in good faith. The registration by Respondent simply serves to deprive Complainant of an ongoing communication mean related to its trademarks which necessarily results in disrupting Complainant’s business”

Redirection

< target-store.info > (2007): sex is bad (faith)

“ redirection of Internet users to adult-oriented content is itself evidence of Respondent’s bad faith registration and use”

< venetian.mobi > (2008): “Respondent, in redirecting the disputed domain name to the website of a third party, is acting in bad faith”

here, redirection was activated immediately after Complainant served Respondent with the complaint

< wirecard.biz > (2008): “Respondent is using the Domain Name to attract, Internet users, and redirect them to “www.peterhost.ru’s” website where services unrelated to Complainant are offered”

here, the panel noted the explicit offer made by Peterhost.ru to redirect to its website is made for commercial gain

≠ < netbooks.net > (2007): “Absent evidence that the Trademark is well known, the Panel is unwilling to make the deduction that Respondent was proceeding in bad faith in its misdirection or redirection of Internet users”

Lease

Who uses the name?

Who is responsible?

The registrant?

The lessee?

Both?

UDRP:

The named registrant is the party that is responsible for the content of the website ( < aspire.com >, 2007 / < manhunt.com >, 2007)

≠ ICANN accreditation agreement:

“ An SLD holder licensing use of an SLD according to this provision shall accept liability for harm caused by wrongful use of the SLD, unless it promptly discloses the identity of the licensee to a party providing the SLD holder reasonable evidence of actionable harm.”

Effect of prior use by a third party / before a change in the whois

< creditkeeper.com > (2007):

“ When a party acquires a domain name that is being used in bad faith, the Panel may infer that that acquisition was motivated by an intent to continue the bad faith use”