Was the decision in DesertGolf.com wrongly decided? Perhaps not…

The facts as we know them:

Since 2001, Complainant has published Desert Golf & Tennis, a luxury magazine illustrating golf and tennis lifestyles and activities. Complainant uses the domain name <desertgolfer.com> for its primary website. Complainant registered the <desertgolfer.com> domain name on July 19, 2001.

Respondent registered the disputed domain name in 1995, and put it to commercial use. Respondent has used the disputed domain name to receive and process golf tee-times and lodging reservations. Now, the disputed domain name has been re-purposed for a legitimate non-commercial function of archiving the appearance of HTML v.1 coding, circa 1995. (See full case here)

As many people familiar with the UDRP are already aware, it does not require the Complainant to have a “registered” trade mark, but the Policy also extends to common law rights which would demonstrate that the name has become a distinctive identifier associated with the Complainant or its goods or services. In this case, evidence to demonstrate the length of sales under the DESERT GOLF mark, the nature and extent of advertising etc would be sufficient for the Complainant to overcome the first hurdle. The issue that the term “Desert Golf” is compromised of dictionary words is also overcome by the Complainant by providing this information, as he is illustrating to the Panel that the term has taken on a “secondary meaning”, associated with his goods or services. We need to remember that at this point the Respondent does not forfeit the domain name simply because the domain in his possession is confusingly similar to the rights of another, the Policy is concerned at this point with the existence of a right and whether Complainant has the proper standing to bring forth a complaint.

The Respondent’s domain registration appears to predate the domain by over 5 years. Timing is important for the purpose of proving bad faith under the third element of the Policy as it would be almost impossible for the Complainant to demonstrate that the Respondent should / would have been aware of his non-existent right. However the Panel has gone a step further in interpreting the meaning of “registered in bad faith”:

“Complainant does not allege that Respondents primary purpose in initially registering the domain desertgolf.com was intended to disrupt Complainant’s business or to interfere by competing with it since Complainant did not yet have its own domain desertgolfer.com until a few years after Respondent registered derertgolf.com.  However, Complainant does allege that as years passed and Respondent observed Complainant’s commercial success, Respondent subsequently re-registered desertgolf.com with the express purpose of capitalizing on Complainant’s success, and leverage what Respondent observed to be a need to acquire Respondent’s domain desertgolf.com

The Panel agrees that the present circumstances are so extraordinary as to warrant consideration of Complainant’s re-registration argument that Respondent’s use of the disputed domain name to feature links such as “Spa Vacations,” “California Golf,” and “Course Tee Times” is in competition with Complainant, and therefore disrupts Complainant’s own offerings in violation of Policy ¶ 4(b)(iii).”

Both the Complainant and the Panel concede that the Respondent could not have had the Complainant in mind when he registered the domain name; how could he, the Complainant did not yet exist, there was no motive on the part of the Respondent to use the domain name abusively. However, they do argue that Respondent’s motive changed over time, from a pure one to an impure one. Upon observing the Complainant’s need he sought to take unfair advantage of the Complainant and its mark.

Was this the right conclusion? Was the Panel right to interpret the Policy in this way?

The issue seems to be with the Panels use and consideration of “re-registered” which we assume to mean the renewal of the domain name. Many Panels have long fought over the renewal of a domain name amounting to a new registration and whether it is right in penalizing Respondents who fail to uphold their obligations under Paragraph 2 of the Policy which provides that by applying to register a domain name, or by asking to maintain or renew a domain name registration, a Registrant represents and warrants that (a) the statements Registrant made in the Registration Agreement are complete and accurate; (b) to Registrant’s knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) Registrant is not registering the domain name for an unlawful purpose; and (d) Registrant will not knowingly use the domain name in violation of any applicable laws or regulations. 

Many will argue that the obligations set forth in Para. 2 are merely a matter of contract between a Registrant and Registrar, but is not the UDRP a matter of contract? When a Registrant proceeds to register a domain name they are not only agreeing that any future disputes will fall under the jurisdiction of the Policy but also that they will not now or in the future use the domain name in violation of any laws or regulations or the rights of any third party. This obligation continues to remain in force upon renewal of the domain and even after proceedings have ended in favour of a Respondent.

Cases where subsequent bad faith are found could be likened to someone acquitted of a crime and announcing on the court steps that they in fact “did do it”. Even after a decision being passed (right or wrong) acquitting the Respondent of any wrong doing, Para. 2 still places a continued burden on them to act appropriately.

It is clear the Respondent did not help themselves in this case when he did obtain sufficient knowledge of the Complainant, whether the Policy is the right platform for such a finding is another thing.

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