Domain Disputes: don’t go there if you are late

Written by Samuel O’Toole | September 3, 2021

Intellectual Property

The Uniform Domain Name Dispute Resolution Policy (UDRP) is a dispute mechanism designed to resolve claims relating to domain names. It offers a cost effective and quick way to adjudicate claims and it does a good job of it.

Any complainant who intends to be successful (and who doesn’t) in a UDRP claim needs to succeed on three key points: a) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; b) the respondent has no rights or legitimate interests in respect of the domain name; and c) the domain name has been registered and is being used in bad faith.

A majority of cases are won and lost on “bad faith”. The UDRP Policy does not define what is meant by bad faith but it does provide a number of non-exhaustive examples, this includes for example the respondent buying the domain name to sell it to the complainant for excessive costs or to a competitor of the complainant.

Without doubt, it is easy to look at domain registrations and determine whether they have been brought to be sold on. It should go without saying but its only possible to buy and sell a domain name to third party when that third party was in existence at the time the domain name was purchased.

In the recent UDRP case of College Fresh, Inc. v. Martin Kennedy, Kennedy Consulting (Case No. D2021-1892), College Fresh, Inc (the complainant) argued that Martin Kennedy (the respondent) had purchased the domain primarily for the purpose of selling it back to College Fresh, Inc. In turn Martin Kennedy denied the complaint and sought a declaration that College Fresh, Inc had brought the proceedings as an abuse of process.

Robert A. Badgley, the UDRP panelist, quickly unraveled the complaint. The panelist noted that the <> domain was registered by Martin Kennedy in 2005, College Fresh, Inc came into existence in 2010 which is when it also registered a US trade mark for COLLEGE FRESH. The panelist explained in light of this that:

“The Panel concludes from this lean record that Complainant has failed, by a wide margin, to prove that Respondent registered the Domain Name in bad faith. There is no getting around the fact that Complainant did not even exist until 2010, by which time Respondent had owned the Domain Name for five years. Likewise, Complainant did not begin to use its COLLEGE FRESH trademark until 2010 – again, five years after Respondent had registered the Domain Name. Further, the COLLEGE FRESH trademark was not even registered until 2017, nearly 12 years after Respondent had registered the Domain Name.”

The UDRP complaint was struck out because, quite simply, how could Martin Kennedy buy a domain name in 2005 to sell it to an entity that didn’t exist. Martin Kennedy was further successful in a finding of Reverse Domain Name Hijacking (essentially that the complaint was brought as an abuse of process) which is now a matter of public record; not a good look if you ask me.

This case should be a warning to others about bringing UDRP claims where the dates do not add up. Our team of expert lawyers offer a free consultation in which they will be able to advise you on whether the UDRP is for you or not, its often better to consider this before commencing a UDPR complaint so feel free to get in touch.

Written by Sam O’Toole, Solicitor

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