The Worst UDRP Domain Dispute Analogy Ever? — Is This

Now this is just stupid.

I just finished reviewing the details of Tata Communications’ case against Portmedia Inc. for the domain name TrueRoots.com. The facts of the case are fairly clear: the domain name was registered well ahead of Tata Communications started using the term TrueRoots. Later, once Tata started using the mark, the parked page at TrueRoots.com started to display links related to Tata’s use.

As is sometimes the case, the panelists disagreed over the third section of UDRP, which states that the domain name must be registered and used in bad faith. Despite this language, some panelists say the intent of the policy was that this ought to be or, not and. In other words, these people think that if you register a domain name that doesn’t have a trademark, then UDRP can still be used to get that domain name if it later infringes on a mark.

In explaining this view, panelist M. Scott Donahey gives perhaps the dumbest analogy I think I’ve ever read in a UDRP:

As this Panelist sees it, the majority’s interpretation elevates form over substance. The approach taken by the majority is the equivalent of applying the scienter test in the case of a shooting not only to the shooter’s state of mind at the time he fired the gun, but also to his state of mind at the time he purchased the gun. Thus a man who purchased a gun with the intent to engage in target practice would be free thereafter to shoot his neighbor with impunity.

Portmedia won the case. It was defended by Ari Goldberger.