Domain Name Wire

Panelist: UDRP is not a sword

A well reasoned opinion on registration in bad faith.

A recent UDRP decision for scrubology.com includes an excellent analysis of the registration in bad faith element of UDRP.

Here are the facts:

- Respondent registered scrubology.com in 2005

- Complainant RXGear, LLC filed a trademark for scrubology claiming a first use in commerce date in 2010

This case looks dead on arrival, doesn’t it?

But RXGear’s attorneys, Wolf, Greenfield & Sacks, P.C. (an intellectual property law firm), claimed that the respondent had retroactively engaged in bad faith registration. This may sound stupid, but the idea of retroactive bad faith registration has been supported by a small handful of panelists. Most panelists have shunned the idea and it has fallen out of favor.

Notably in this case, the owner of the domain didn’t show any plausible and intentional bad faith after RXGear started using the Srubology term, so the case was different from other cases where “retroactive bad faith” was applied.

Panelist William F. Hamilton nicely sums up how the situation is RXGear’s fault:

…Indeed, the Policy’s protective reach should not be turned into a sword. In this case, either the Complainant became aware, or should have become aware, of the disputed domain name when doing its due diligence in connection with registering SCRUBOLOGY. The Complainant nonetheless chose to proceed with the registration and its business plans. Presumably the Complainant also came across the disputed domain name when registering scrubologyshop.com. Indeed, significantly, the Complainant fails to allege when the Complainant first became aware of the disputed domain name. Having proceeded with its business knowing of the disputed domain name, can the Complainant now fairly complain of its self-created plight? Could the Complainant reasonably believe that the disputed domain name would be used for anything other than the sale and promotion of medically related clothing? The Panel answers these questions in the negative.

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Tags: Policy & Law