ICA Successfully Advocates to Discredit the Dangerous Retroactive Bad Faith Theory Under the UDRP

Let’s say you register a domain name today. You’ve done your due diligence, and you see there aren’t any companies that use the keyword(s) in your domain name as a trademark or for their brand name. A few years from now, some company launches with its brand matching your domain name.

The company now wants your matching domain name, but they don’t want to pay you for it – they want to take it from you. Until recently the company could file a UDRP complaint seeking the transfer of your domain and reasonably hope to succeed in being awarded your domain by the UDRP panel. The company would rely on a fringe interpretation of the UDRP known as “Retroactive Bad Faith” (RBF) that some panelists used to justify the transfer of long registered domain names to owners of trademark rights that arose since the domain was registered.

RBF had been cited in a number of UDRPs. One particular case that stands out is the UDRP for Camilla.com. Here’s what Andrew Allemann wrote about that UDRP decision, which ended in a transfer ruling in favor of the complainant:

“A three-person World Intellectual Property Organization panel determined that, even though the domain name was registered prior to the Complainant having rights in the (common name) Camilla, Lichtman somehow registered the domain name in bad faith. The panel’s argument was that the domain name was registered speculatively ‘with an open mind to as to the exploitation of trademark rights’ in the future.”

Shortly after the Camilla.com UDRP decision, the Internet Commerce Association (ICA) wrote a statement calling the decision “egregious.” The ICA’s efforts didn’t stop with this statement though. The ICA published three articles through its CircleID account discussing the unhappy history and damaging consequences of the RBF theory. Phil Corwin and the ICA board also lobbied WIPO to remove RBF from its UDRP guidelines. I also understand that domain industry attorneys were arguing against RBF in UDRP complaints that cited it. Fortunately, the ICA’s effort was successful.

RBF is now “universally discredited” and should no longer pose a threat to domain owners. In fact, in the recent ALO.com UDRP decision, the panel shot down the complainant’s attempt at citing retroactive bad faith and ruled it was a case of Reverse Domain Name Hijacking.

I am proud to support the Internet Commerce Association, and I think this is a very good example of how this organization is helping domain investors and others who own valuable domain names.