In my article "Domain name disputes: the UDRP 10 years on", Journal of Intellectual Property Law & Practice 2009 4: 714-725; abstract here), I expressed certain views about the advisability/acceptability of panellists (dispute adjudicators) ‘stretching’ the meaning of the UDRP to cover modern domainer practices.
The situation has changed dramatically with two decisions issued recently by Scott Donahey, the distinguished US panellist who decided the very first case under the UDRP (WIPO Case No. D1999-0001). He has had an epiphany, now realising that he and most of the rest of us panellists have misunderstood the UDRP for the last 10 years. Scotts’ two recent decisions (as with all WIPO UDRP decisions) are to be found on the part of the WIPO website at www.wipo.int dealing with domain names. They are WIPO Cases Nos. D2009-0643 (mummygold.com) and D2009-0786 (octogen.com).
The upshot is that he and some other of the leading WIPO panellists are now willing to find that a domain name registration is an abusive registration under paragraph 4(a)(iii) of the Policy notwithstanding that there is no evidence to suggest that the domain name was registered in bad faith. In other words, the ‘and’ in paragraph 4(a)(iii) can mean ‘or’. It may also lead to renewals equating to registrations, contrary to the consensus view to date (See paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
For an indication of the extent of the change advocated/applied in these decisions reference should be had to that part of the WIPO index dealing with good faith registration and bad faith use, which lists a series of cases all taking a materially different line.
The matter is currently the subject of some debate and my concern is that nobody should assume that my preferred route (as described in the article) is the likely route forward for the next decade. Indeed, it may soon be seen to be heterodox.
The situation has changed dramatically with two decisions issued recently by Scott Donahey, the distinguished US panellist who decided the very first case under the UDRP (WIPO Case No. D1999-0001). He has had an epiphany, now realising that he and most of the rest of us panellists have misunderstood the UDRP for the last 10 years. Scotts’ two recent decisions (as with all WIPO UDRP decisions) are to be found on the part of the WIPO website at www.wipo.int dealing with domain names. They are WIPO Cases Nos. D2009-0643 (mummygold.com
The upshot is that he and some other of the leading WIPO panellists are now willing to find that a domain name registration is an abusive registration under paragraph 4(a)(iii) of the Policy notwithstanding that there is no evidence to suggest that the domain name was registered in bad faith. In other words, the ‘and’ in paragraph 4(a)(iii) can mean ‘or’. It may also lead to renewals equating to registrations, contrary to the consensus view to date (See paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
For an indication of the extent of the change advocated/applied in these decisions reference should be had to that part of the WIPO index dealing with good faith registration and bad faith use, which lists a series of cases all taking a materially different line.
The matter is currently the subject of some debate and my concern is that nobody should assume that my preferred route (as described in the article) is the likely route forward for the next decade. Indeed, it may soon be seen to be heterodox.
