Monday, June 3, 2013

Registering Your Son's Name as a Domain Name is Illegitimate


By Zak Muscovitch.


According to an NAF Panelist in the recent decision regarding justinalexander.com, you have no legitimate interest in a domain name corresponding to your son's name, if you have not used it for a website.


The Respondent in this case, who was even represented by a lawyer, failed to persuade the single-member UDRP Panel, that even though his son's name was Justin Alexander, that he had a legitimate interest in the domain name:  


"The Respondent has never used the name and that the son, Jason Alexander, does not own the name and is at most the beneficial owner.  In such circumstances, finding rights in the name is impossible." The Panelist also found that "failure to make active use of the name is an important fact in favor of Complaint."


Furthermore, the Panelist ruled that the domain name had been registered and used in bad faith, although the reasons are not clear. He did say that, "Failure to make use of the name is also critical in this analysis." He also mentioned that. "Respondent contracted control of the domain name out to third parties and did not know who owned the <justinalexander.com> domain name or how it was used for several years. Respondent in fact did not have control over the domain name." It is not clear from the decision what this is really referring to aside from some use that was totally unrelated to the complainants bridal design business, but in any event it would not seem to matter since there is no indication in the decision that the domain name was registered because of the complainant's trademarks in the first place.


Again, it is not clear at all that the Respondent "targeted" the trademark owner by registering he domain name, which is essentially the "definition" of cybersquatting. In other words, in order for bad faith registration to have occurred the primary motivation for registering the domain name would have to have been an awareness of the complainant's marks, combined with an intention of interfering with the complainant's trademarks or preventing the complainant from reflecting its trademark in a corresponding domain name.


This indeed is a troubling decision and I would love to hear from the respondent's counsel what he thinks of it. I would point out that the Panelist, Glen R. Ayers, although a bankruptcy lawyer and former bankruptcy judge, has decided about 140 cases since 2000, including many excellent decisions such as, concierge.com, strick.com, doom.com, luckymoney.com, drugs.biz, h5.com, abt.com, ssx.com, ace.net, and many, many, many others. In fact, he has one of the best records of NAF panelists. Accordingly, perhaps something didn't come out quite right in the written decision, although it was apparent to the panelist from reviewing the evidence.


Nevertheless, perhaps of utmost concern in this case, is the apparent reference to an application of the UDRP that has been widely discredited:

"The Panel may note that other panels have held that a presumption of good faith registration from before a complainant had rights may be undone by the renewal of the registration in bad faith. See Dockeast LLC v. Jurmark, FA 149147 (Nat. Arb. Forum Apr. 24, 2003) (holding that the respondent’s renewal of the domain name registration, which changed the ownership of the domain name registration from its employer to itself, was effected in bad faith)."


Read this interesting paper on the applicability of  'renewals' to "bad faith registration", by Philippe Rodhain. See also the WIPO consensus view on the subject:


"3.7 Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether the domain name was registered in bad faith?

While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name."

I hope that the Panelist relied upon the Dockeast case for only the proposition that a change in ownership can trigger bad faith registration rather then mere renewal.

7 comments:

Anonymous said...

Hi Zak,

My thoughts exactly.

The panelist's reasoning doesn't add up.

-UDRPtalk

Anonymous said...

Hi Zak,

My thoughts exactly.

The panelist's reasoning doesn't add up.

-UDRPtalk

Zak Muscovitch said...

@Anonymous, many thanks for reading and for your comment. Please email me your name so I know who you are, as you seem to be affiliated with UDRPTalk :)

Jonathan said...

Hmm interesting decision.

The decision is surprising to me, as it seems that the owner does have a legitimate use of the name for his son.

It's unfortunate that the panel decided as it did. I'm not sure how the use is found to be illegitimate.

Developing some sort of website would have helped the Respondent, but for a name domain it seems kind of a stretch to ask the Respondent to develop a website in my opinion.

It certainly serves as a warning. It seems that at times to prove legitimacy for a domain that contains a mark, but may be used fairly some sort of web development should occur on the domain name.

But for a name domain for your son, really?

Zak Muscovitch said...

@Jonathan, many thanks for reading and for your comments!

I feel that sometimes a decision unfortunately and inadvertently does not adequately present the evidence that was before the panelist. Sometimes I see this to be the case with decisions that I have been involved with as a domain name lawyer.

It may be the case here, that something did not quite add up for the panelist, and accordingly he made his decision on some aspects that didn't shine through to the decision. One never knows of course. Give this panelist's apparent excellent record, I am giving him the benefit of the doubt in this respect, although from these facts as presented in the decision, I do have questions.

JoeR said...

I registered domains for my two children before they were born 10 years ago and they now have web sites but for the first 5 years they sat empty for future use. Just because you have not developed a web site should not show bad faith.

testthelaw123@gmail.com said...

http://ia601801.us.archive.org/27/items/gov.uscourts.mad.152395/gov.uscourts.mad.152395.1.0.pdf

Complaint for DJ action was filed and you might guess what happened from there. Was it a good panelist decision.. ? Nope.