Paris wins domain as arbitrator throws out “registration AND use” in bad faith.
In September I wrote about the city of Paris, France filing a UDRP against three domain names: WifiParis.com, Wifi-Paris.com, and Parvi.org. Paris was just handed a victory in the Parvi.org case; the other two cases are pending.
What’s disturbing about the Parvi.org case is that the panel found that the domain name was likely not registered in bad faith, but still handed the domain over on the basis that it was later used in bad faith.
Under the header “Reconsideration of the bad faith requirement”, arbitrator Andrew F. Christie cited previous cases decided by a “distinguished” panelist who found that domain names don’t need to be registered AND used in bad faith, as the UDRP states. Instead, this panelist decided that a domain not registered in bad faith could still violate the policy if it was later used in bad faith.
The intent of the Policy is to provide a fair and efficient mechanism for trademark owners to obtain redress in situations where their trademark rights are abused as a result of bad faith activities of domain name registrants. There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name
Well, the policy is also supposed to provide a fair mechanism for domain name owners. That Paris filed two egregious cases of reverse domain name hijacking at the same time it filed the Parvi.org case should cause any panel to give the benefit of the doubt to the respondent.
Indeed, Christie doesn’t think the domain owner knew about the Parvi trademark at the time of his registration:
…Although it is certainly possible that the Respondent was aware of the Complainantâss PARVI trademark, and of the Complainant’s programs under that trademark, at the time the Respondent registered the domain name, this seems unlikely given the different geographical locations and native languages of the Complainant and the Respondent. Thus, this Panel is not satisfied, on the present record, of the probability that the Respondent registered the disputed domain name with the intention of benefiting from the Complainant’s PARVI trademark.
If the domain wasn’t registered in bad faith but was later used in a way to violate Paris’ trademark, its redress is in the courts, not UDRP. This sort wholesale change and expansion of UDRP by panelists is one of the reasons people are questioning the implementation of the policy. Whenever a panelist writes that his reasoning is “a logical and incremental evolution of panel thinking”, one should give pause.
Perhaps Andrew Christie is on a crusade to implement his vision on UDRP. He was also the presiding panelist on the Project.me case, which broke with precedent by suggesting that the top level domain should be considered part of the domain for trademark purposes.