Many may regard this case as the typical “cybersquatter” scenario, with which the UDRP was designed to combat. The facts would seem to suggest so:
- Domain name was registered 2 years after Complainant commenced operations
- Respondent sends unsolicited email to sell domain to Complainant
- Respondent resolves domain to a PPC webpage with competing links
- Respondent found to have no rights or legitimate interest in the domain
Not only did the Respondent fail to show that he had a legitimate interest in the domain name, the Panel also found that he was using the domain name in bad faith, finding:
“Although Respondent stated that he registered the Domain Name for its generic and descriptive meaning, the Domain Name has resolved to a webpage featuring pay-per-click links, many of which refer to Complainant’s competitors. Thus, by targeting Complainant’s trademark subsequent to having registered the Domain Name for its descriptive meaning, Respondent has used the Domain Name for the bad faith purpose of attracting, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s trademark.”
So where did it all go wrong for the Complainant?
In order to be successful in its complaint, the Complainant must address a second fundamental issue which cannot be overlooked – the issue of registration in bad faith.
The Panel held:
“There is no evidence in the record that Respondent targeted Complainant when it registered the Domain Name, nor is there evidence that would require Respondent to have had constructive notice of a trademark owned by Complainant. The phrase “MD online” is descriptive and undistinctive, which supports Respondent’s claim that it registered the Domain Name for its generic meaning. Further, Respondent has stated, without contradiction, that it had no actual knowledge of Complainant at the time it registered the Domain Name. The Panel thus finds that there no sufficient evidence that Respondent targeted Complainant’s name or trademark when it registered the Domain Name. Further, there is no case to be made that Respondent, at the time of registration, registered the Domain Name with intent to sell it to Complainant, to disrupt Complainant’s business, or to prevent Complainant from registering its name or trademark in a domain name.”
Even In cases such as this where flagrant abuse is present the Panel is unable to re-write the UDRP, with its conjunctive requirement. It does sound from the decision that the Panel was reluctant to make the decision – sympathizing with the Complainant – however the Panel rightly refused to overstep the mark, concluding that the only permissible way for justice in these types of cases to be achieved is if ICANN amend Paragraph 4(a)(iii) from an “and” into an “or” requirement.
This no doubt fuels the concerns of many skeptics of the UDRP on whether the conjunctive requirement effectively addresses the fundamental problem of cybersquatting.