WIPO panelist makes bonkers decision

This panelist needs a refresher.

A recent UDRP for quobly.com was found in favor of the domain owner. But a dissent in the case is very troubling.

Quobly, which uses the domain quobly.io, filed the case.

The company wasn’t incorporated until November 2022. It changed its name to Quobly in July 2023.

Chris Dolland registered the domain in September 2022.

He had actually registered it a couple of times before and let it lapse, but that’s not ultimately important: he registered the domain before the complainant existed. It’s impossible that he registered it to target a non-existent complainant.

But World Intellectual Property Organization panelist Joseph Dalby SC somehow decided it was registered in bad faith.

He said it was merely a technicality that the complainant didn’t exist at the time the domain was registered:

This leaves the incontrovertible fact that the Complainant’s mark did not exist at the time of registration. In the vacuum left by a paucity of evidence on the part of the Respondent the argument in effect submitted on his behalf rests on a technicality: that as the Complainant was not in existence at the time of registration, the Respondent could not have targeted the Complainant, and accordingly it matters not in this proceeding that he has not succeeded on any other element.

Dalby then cited WIPO Overview 3.1, paragraph 1.1.3, which states:

Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.

He said this is one of those exceptional cases.

He cited section 3.8.2 of the same overview. That states:

As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.

Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.

That’s pretty clear. If the registrant knew about a company planning to use a name, or it was announced but pre-trademark, then it could be registered in bad faith.

In this case, the domain was registered before the complainant even existed and before it adopted the name matching the domain. It is impossible that he registered the domain to target the complainant.

Dalby wrote:

Panels are permitted to take into account the totality of circumstances. In this case the intention to sell at an inflated price, the lack of the Respondent’s own rights to or legitimate interests in the disputed domain name and the absence of any conceivable good faith intention and bad faith in terms of use, and the lack of consistency are established indicia from which inferences may be drawn. These factors lead me to infer that the intention at the point of registration to sell the disputed domain name was for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, as illustrated by UDRP paragraph 4(b)(i). I consider these to be exceptional circumstances. And I therefore find on the balance of probabilities that the Respondent registered the disputed domain name in bad faith.

Under Dalby’s interpretation, if you register a domain intending to sell it to any future company that might adopt the name, that’s registration in bad faith.

That flies in the face of years of UDRP precedent and the clear language of the UDRP, let alone the passages he cited from the WIPO Overview.

It’s a good thing Dalby wasn’t the sole panelist. One of the other panelists found this to be a case of reverse domain name hijacking.

According to UDRP.tools, this is the first WIPO case Dalby has been involved with since 2013.