This was the right decision. It’s too bad that CDRP panelists sometimes refuse to read the word “and” for the criteria.
Compare the UDRP language:
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
To the CDRP language:
In accordance with paragraph 4.1 of the Policy, to succeed in this proceeding, the
Complainant must prove, on a balance of probabilities, that:
(a) the Registrant’s Domain Name is Confusingly Similar to a Mark in which
the Complainant had Rights prior to the date of registration of the domain
name and continues to have such Rights; and
(b) the Registrant has registered the domain name in bad faith as described in
paragraph 3.5 of the Policy;
and the Complainant must provide some evidence that:
(c) the Registrant has no legitimate interest in the Domain Name as described
in paragraph 3.4 of the Policy.
In a recent decision ordering the transfer of termodeck .ca in a CDRP, panelist Eric Macramalla wrote:
BAD FAITH REGISTRATION
38. The Panel has reviewed the License Agreement and notes that it fails to provide for the express disposition of the Domain Name upon termination. This is
ultimately the key issue at play in these proceedings as a number of CDRP and
UDRP Panelists have concluded that absent an agreement expressly providing for the transfer of a domain name upon termination, a Complaint should fail.
39. This Panelist, however, disagrees with such an approach as it is commercially
impractical and misaligned with fundamental trademark principles. In instances
where a license agreement requires that the use of a trademark cease upon
termination, that should not only include discontinuing the statutory use of
trademarks, but also transferring an impugned domain name to the brand owner.
To do otherwise amounts to nothing more that an artificial distinction that is not
in keeping with commercial realities. If a licensee’s rights to use a trademark are
terminated, then from that it reasonably flows that the use of a domain name must
cease and be transferred to the brand owner.
40. There is little doubt that the Registrant’s activities fall squarely within Paragraphs 3.5(c) and 3.5(d). The Domain Name was made to hyperlink to the competitor website of the Registrant. The Registrant’s activities qualify as bad faith. The Panel also notes that it is not necessary for the Domain Name to be active to make a finding of bad faith. If the Domain Name would cause confusion if ever put, then it could trigger a finding of bad faith.
41. In light of the foregoing, the Panel finds that the Complainant has established bad faith as per paragraphs 3.5(c) and 3.5(d).
Mr. Macramalla’s results oriented logic is disappointing.
