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October 7, 2010 / Nate Harris

What’s Wrong with the UDRP?

In a recent post on Domain Name Wire, Andrew Allemann identified a complaint that many people have about the UDRP: a respondent is forced to spend the time and money on a full answer even when a complaint is facially deficient. Allemann points out two recent decisions (this one and this one) where the complainant had no trademark rights at the time the domain was registered, meaning that it will be impossible to prove bad faith registration. As Allemann argues:

UDRP needs reforming. There need to be some changes to protect both complainants and respondents. One of my suggestions is to have an automatic check that throws out any case where a complainant does not claim it had rights in the mark prior to the respondent registering the domain name. This disproves bad faith registration and merely harasses the respondent who must take the time (and perhaps money) to respond.

Sounds eminently reasonable to me.

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2 Comments

  1. Doug Isenberg / Oct 7 2010 10:33 am

    But here’s an often-cited decision (Octogen v. Sanders — in which I represented the Complainant) in which the panel said: “The generally accepted panel view is that, absent certain limited exceptions not applicable here, the registration of a domain name prior to the establishment of trademark rights precludes the finding that the registration was in bad faith…. However, based on the different considerations which have arisen in panel decisions on the issue of bad faith registration, and based on a close analysis of the landmark decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that under certain facts and circumstances “passive use” of a domain name could constitute bad faith use) and a careful reading of the language of the Policy, the Panel is convinced that both the Telstra approach and the language of the Policy itself provide a basis for panels to broaden their position on this issue.”

    As a result, the panel in the Octogen case found bad faith even though “[t]he domain name at issue was registered some eight years prior to the issuance of Complainant’s registered OCTOGEN mark…”

    See http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0786.html

  2. Nate Harris / Oct 7 2010 11:02 am

    Doug:

    Good point–that concept of “retroactive” bad faith registration might cure the complaints in those examples cited in the article. On a related note, the “.us” TLD requires only that bad faith registration or use be proven. Rule 3(c)(ix)(3), Rules for the usTLD.

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