Re: [gnso-rap-dt] Registration vs. Use / Scope Issues

[George Kirikos <icann+rap@xxxxxxxx>]

I strongly disagree with both Jeff and Mike Rodenbaugh.

If the IRT really believes "or" is equivalent to "and", they should
simply change the wording back to "and." If their argument that it
makes no difference is true, then they should have no problem changing
it back. Whatever happens in .us is irrelevant as it is a ccTLD. The
GNSO is for gTLDs, Jeff, as you should be aware.

As for Mike's statement that:

"So, it has long been accepted that use of a domain name, sometimes
long after initial registration, can amount to bad faith
registration."

I've seen some lawyers put forth that argument before, but what
they're actually trying to say is that one can "infer" bad faith
registration after the fact, through the usage. However, BOTH elements
(registration AND use) must still be proven to have been in bad faith.

However, registration and use are totally different and distinct. You
can see this in almost every reverse domain name hijacking case or
alleged (as the creation date is so critical). Let me provide some
examples (found by doing a simple search for "hijacking" at WIPO, so
I'm not being exhaustive):

1. http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1313.html

"The Respondent has owned the disputed domain name from at least 2005
(and possibly earlier because of its merger with or acquisition of the
previous registrant which had registered it in 2000).

The Complainant’s proposed business did not exist and had not been
conceived as at the time of the registration of the disputed domain
name. It is, therefore, impossible to prove that the registration was
in bad faith or indeed, that there has been use in bad faith."

..... "This Complaint could never possibly have succeeded because the
disputed domain name was registered approximately 2 years before the
Complainant’s proposed business even existed, let alone before he
registered a trademark."

In other words, the creation date trumped the TM. There was no need to
analyze renewal in bad faith or things like that --- it was obvious.

2. http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0905.html

"In the Panel’s unanimous view the Complainant in this case cannot
demonstrate bad faith registration of the disputed domain name. The
disputed domain name was registered approximately 3 years prior to the
application for registration of the Complainant’s trademark, and more
than 4 years prior to the Complainant’s first use in commerce. Without
evidence of special circumstances (for example, of the Respondent
being aware of the Complainant’s potential rights or interests) the
Complainant cannot establish any of the individual circumstances
listed in paragraph 4(b)(i), (ii) or (iii) of the Policy or otherwise
demonstrate registration in bad faith. It is well established by
previous Panels that this section of the Policy requires a
demonstration of both registration and use in bad faith."

(notice in particular the words "BOTH REGISTRATION AND USE IN BAD
FAITH" --- sorry Jeff, you're simply wrong, otherwise why are they
using the word BOTH?)

3. http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0645.html

"The failure to establish that the domain name was registered in bad
faith is fatal to the Complainant’s case, which must be dismissed."

In other words, they didn't even have to LOOK at the "use" part ---
separate and distinct tests, as I've been saying. Notice they didn't
even bother to test the "Identical or Confusingly Similar" or "Rights
or Legitimate Interests" parts, as simply the creation date (i.e. the
act of initial registration) lack of bad faith trumped all.

The above 3 cases were all at WIPO. Let's find 3 more from NAF, just
to show consistency. I'll simply do a search for "hijacking", jump to
the newest cases, and look at the "claim denied", to quickly find
cases that should involve the creation date as critical components.

4. http://domains.adrforum.com/domains/decisions/1250988.htm

"As the Respondent correctly notes, it is well-established case-law
under the UDRP that, in general, a finding of bad faith registration
cannot be made with respect to a trademark that did not exist at the
time of registration of the disputed domain name."
....
" (finding that it is “impossible” for the respondent to register
disputed domain name in bad faith if the complainant company did not
exist at the time of registration)."
...
"The Complainant knew, when it filed the Complaint, that the
registration of the disputed domain name preceded by several years any
rights that the Complainant may have acquired in the string VERSA
CAPITAL.  This is sufficient to find reverse domain name hijacking."

5. http://domains.adrforum.com/domains/decisions/1250495.htm

"Respondent’s registration of the disputed domain name predated any of
Complainant’s implied or asserted allegations of rights in the mark.
Thus, Respondent did not engage in bad faith registration under Policy
¶ 4(a)(iii).  See Telecom Italia S.p.A. v. NetGears LLC, FA 944807
(Nat. Arb.Forum May 16, 2007) (finding the respondent could not have
registered or used the disputed domain name in bad faith where the
respondent registered the disputed domain name before the complainant
began using the mark); see also Aspen Grove, Inc. v. Aspen Grove,
D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for
the respondent to register disputed domain name in bad faith if the
complainant company did not exist at the time of registration); see
also Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30,
2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration
and use, so where a respondent initially registered the disputed
domain name in good faith, the panel should deny the transfer of the
disputed domain name to the complainant)."

6. http://domains.adrforum.com/domains/decisions/1233395.htm

"However, the fact that the disputed domain name was registered before
Complainant had trademark rights in the FULL TERM mark precludes a
finding of bad faith under Policy 4(a)(iii)."

I can find a lot more examples to support my position. I challenge the
other side to demonstrate that panelists are treating things any
differently. In other words panels have to look at *BOTH* registration
AND use, because they are 2 distinct items.

I'm disturbed that folks who purport to be experts in DNS policy are
not aware of these very basic matters.

Sincerely,

George Kirikos
http://www.leap.com/