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.