Zak Muscovitch, interim General Counsel of the Internet Commerce Association (ICA), took the rare step of issuing a statement on behalf of the ICA following a controversial UDRP decision that could impact future UDRP decisions should the same wrong approach be applied. You’ll want to read the ICA’s statement on CircleID urging UDRP panelists to follow the policy rather than seemingly set their own guidelines. The Devex.org decision could be one cited by future complainants, and I am glad to see the ICA call it out.
For domain investors, the most concerning aspect of the decision can be found in the section discussing registration and use in bad faith. The decision states:
“Respondent’s apparent belief at the time it registered <devex.org> that someone, at some time in the future, might cultivate trademark rights in DEVEX which Respondent could then exploit obviates any requirement that to succeed under the UDRP the respondent must have contemplated a particular trademark holder and/or a particular trademark.”
What this seems like to me is that the panelist is saying that if you register a domain name today and a company uses that keyword as a trademark ten years from now, they could win a UDRP complaint. I have always been under the impression that if a domain owner creates a new term – let’s say “tyranasocial” (combining tyrannosaurus and social), they would be safe in the event a company adopts that branding in the future. From my reading and the ICA’s perspective, the panelist is implying that if I were to buy Tyranasocial.com and a company called Tyranasocial is launched in ten years, my domain name would be fair game for them in the UDRP process. I don’t agree with this logic.
You’ll want to read Zak’s statement urging UDRP panelists to follow the policy rather than seemingly set their own guidelines. The Devex.org decision could be one cited by future complainants, and I am glad to see the ICA call it out.