DOMAIN NAMES
Te proliferation of low-cost domain registrations quickly led to the phenomenon of large numbers of domains being registered by business ventures with the sole purpose of selling these domain registrations to third parties with legitimate legal and commercial interest in them. Tis includes use as a company product or service name, with corresponding trademark and company name registrations to protect these interests.
Tis is particularly relevant when domain grabbers register vast numbers of domains and wait for these to become important to third parties with bona fide commercial interests.
If the domains are registered by domain grabbers aſter the corresponding trademarks, service marks or company names, rights holders have a substantial number of instruments at their disposal to assert their rights and reclaim the domains.
In Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings to recover these domains, however, the complainant needs to show the identity or similarity of a registered domain to an earlier trademark or service mark and to establish the offending registrant’s lack of interest.
Te claimant additionally needs to prove that the domain name has been registered and is being used in bad faith (see paragraph 4a. (iii) UDRP). Te original dispute about whether it is sufficient to satisfy one of these requirements, or whether both conditions need to be fulfilled, appears to have been settled. It has become common practice to require both registration and use in bad faith in order to make it possible to assign or cancel the domain. Tis creates an obvious problem for domains which were registered before the rights in the trademarks and service marks arose.
Tis problem has been discussed in a considerable number of recent UDRP decisions. While many panellists ruled out the possibility of registration in bad faith if the right on which the complaint was based was created aſter this point in time, a number of panellists took the view that this result was not what was intended when the policy was draſted.
Tis led to the so-called Octogen line of cases. In the first of these, it was held that a domain name may be registered or acquired in good faith. However, the future use of the domain may violate the representations and warranties made at the time of registration. Such use can lead to a retroactive bad faith registration.
Tis line of cases was endorsed by a number of other panellists and has provided a useful legal remedy for companies faced by commercially unreasonable demands from domain grabbers.
www.worldipreview.com World Intellectual Property Review Annual 2012 51
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