DOMAIN NAMES
However, the Octogen line has been heavily criticised by fellow panellists both in literature and subsequent decisions. Te criticism is mainly based on two arguments which may be summarised as follows:
First, the wording of the policy does not expressly recognise this form of bad faith registration. For that reason it should not be accepted. Second, this approach is not consistent with previous decisions, so for the sake of consistency, it should be rejected.
Following a further decision rejecting this approach, in August 2011, vocal critics of the Octogen line stated that it could no longer be applied.
However, these arguments are not convincing. While this doctrine may not have been part of the UDRP case law in the past, this cannot, and must not, bar it from being implemented in the future. It is a common feature of case law systems to adapt in order to apply new and correct legal doctrines, even if it means having to give up previous positions.
It would seem obvious that the failure to use the domain other than for the purposes of obtaining money for its transfer satisfies several of the conditions of paragraph 4b. (i) or (ii) UDRP:
Failure to use the domain can show that there is no other purpose to the registration than selling, renting or otherwise transferring the domain name registration to the owner of a trademark registration for payments in excess of the registration costs of the domain (i); or, alternatively, that the purpose is to prevent the owner of the mark from reflecting the mark in a corresponding domain name, if a pattern for doing so can be established (ii).
Especially where there is a pattern of such behaviour, it seems illogical to argue that simply
because there is no explicit evidence of actual bad faith concerning a particular domain at the time of registration, this means that the registration must have occurred in good faith. Frequently, quite the opposite is true.
From the point of view of a trademark lawyer, the concept that failure to use a registered right could lead to its loss does not appear as outlandish as it seems to those who criticise the concept. While it is not necessarily considered bad faith, in many jurisdictions failure to use trademarks can make it impossible to assert any rights out of a trademark registration and will make the registration subject to cancellation. In other jurisdictions, failure to use the mark will prevent registration completely, and incorrect declarations concerning use of the mark can be the cause for cancellation of the mark for fraud.
It is also not unheard of in the domain world. In the regulation governing the alternative dispute resolution (ADR) proceedings concerning the .eu top-level domain (TLD), Article 21(3)b) ii) Commission Regulation (EC) No. 874/2004 clearly states that bad faith may be demonstrated if the domain name has not been used in a relevant way for at least two years from the date of registration.
Use may take various forms, which can include typical use as an address for websites, or for email communication. However, the use needs to be relevant. If this is not the case, .eu domain names are frequently transferred on the basis of bad faith due to non-use.
Tere are ample arguments for enabling proprietors of trademarks to freely use their marks in domain names vis-à-vis unused domain names. Tis goal can readily be achieved by following the doctrine established in the Octogen line of decisions.
52 World Intellectual Property Review Annual 2012
www.worldipreview.com
Should the possible ambiguity of the UDRP not make this acceptable to all panellists, an amendment of the policy, bringing it in line with other IP regulations such as trademark law and the provisions governing ADR proceedings for .eu TLDs, should be seriously considered. n
Udo Pfleghar is a partner at Best Rechtsanwälte Attorneys. He can be contacted at:
udo.pfleghar@
best-ip.eu
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