This panelist needs a refresher.
A recent UDRP decision involving the domain quobly.com was decided in favor of the domain owner, but the dissenting opinion in the case raises serious questions about the panelist’s application of established UDRP principles. The dispute originated from Quobly, an entity that uses the domain quobly.io, which filed a complaint under the Uniform Domain-Name Dispute-Resolution Policy (UDRP).
The timeline is central to understanding the dispute. The complainant company was not incorporated until November 2022 and only adopted the name Quobly in July 2023. The domain quobly.com, however, was registered by Chris Dolland in September 2022. There is additional detail that the domain had been registered previously by the same registrant and allowed to lapse before the September 2022 registration, but the decisive point is that the domain was registered before the complainant existed and before the complainant adopted the Quobly name.
Because the registrant predated the complainant, it is effectively impossible that the domain was originally registered with the complainant specifically in mind. Despite that chronology, World Intellectual Property Organization (WIPO) panelist Joseph Dalby SC concluded that the domain had been registered in bad faith.
In his reasoning, Dalby described the fact that the complainant did not exist at the time of registration as a mere “technicality.” He characterized the registrant’s argument that targeting an entity that did not yet exist was impossible as resting on such a technicality, and he found other indicia sufficient to infer bad faith.
This leaves the incontrovertible fact that the Complainant’s mark did not exist at the time of registration. In the vacuum left by a paucity of evidence on the part of the Respondent the argument in effect submitted on his behalf rests on a technicality: that as the Complainant was not in existence at the time of registration, the Respondent could not have targeted the Complainant, and accordingly it matters not in this proceeding that he has not succeeded on any other element.
Dalby cited the WIPO Overview of UDRP Policy (3.1), which notes that when a domain name is registered before the complainant has acquired trademark rights, only in exceptional circumstances will a complainant be able to prove bad faith. He concluded that this case met the standard for an “exceptional” circumstance. The WIPO Overview language he relied on allows panels, in limited situations, to find bad faith where the registrant intentionally attempted to capitalize on a nascent or unregistered trademark—examples include registration shortly before or after a public announcement, insider knowledge, significant media attention, or registration following a trademark filing.
Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.
As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.
But the facts in this matter differ significantly from those illustrative scenarios. The domain was created before the complainant existed and before it chose the Quobly name. There was no public announcement, no evident insider relationship, no notable media attention tied to a Quobly product launch at that time, and no trademark filing to trigger opportunistic registration. Despite this, Dalby pointed to the registrant’s purported intention to sell the domain for a profit, a lack of demonstrable legitimate interests, and the absence of a good faith plan for the domain’s use, as reasons to infer bad faith and conclude that the registrant intended to sell for “valuable consideration” exceeding out-of-pocket costs.
Panels are permitted to take into account the totality of circumstances. In this case the intention to sell at an inflated price, the lack of the Respondent’s own rights to or legitimate interests in the disputed domain name and the absence of any conceivable good faith intention and bad faith in terms of use, and the lack of consistency are established indicia from which inferences may be drawn. These factors lead me to infer that the intention at the point of registration to sell the disputed domain name was for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, as illustrated by UDRP paragraph 4(b)(i). I consider these to be exceptional circumstances. And I therefore find on the balance of probabilities that the Respondent registered the disputed domain name in bad faith.
Interpreted broadly, this reasoning suggests that registering a generic or potentially desirable domain with the hope of selling it to any future company that later adopts the same name could amount to bad faith. That interpretation would conflict with long-standing UDRP precedent and the UDRP’s plain language, which generally require a specific showing of targeting a complainant’s rights or exploiting a complainant’s established or nascent mark under circumstances that make bad faith plausible.
The panel did not reach a unanimous conclusion. One of the other panelists in the three-member panel found the matter to be reverse domain name hijacking, effectively rejecting the complainant’s accusations against the registrant. The split decision underscores how fact-sensitive these disputes are and how important it is for panelists to apply UDRP standards consistently, particularly when timing and the sequence of corporate events are dispositive.
According to public UDRP case listings, this is the first WIPO case in which Joseph Dalby SC has participated since 2013. The decision and its dissent will likely draw attention from domain owners and practitioners concerned about how UDRP panels evaluate registration timing, speculative registrations, and the threshold for finding exceptional circumstances of bad faith.