3.1 And not Or
Both bad faith registration and bad faith use are required under the Policy. These are two distinct concepts and are both integral to a finding of bad faith as understood by the Policy.
The Policy’s requirement and the consensus view since the Policy was implemented in 1999 has been that the conjunctive ‘and’ indicates that there must be bad faith both at the time of registration and subsequently.
A Respondent’s motivation and state of mind at the time of registration is key. A Panel must determine whether at the time of registration, the Respondent targeted a Complainant or its trademark, or at least had the Complainant in mind when it registered the disputed domain name. Although relatively rare, in some instances a Complainant will only allege or prove bad faith use, without bad faith registration in the first place. This is inadequate under the Policy since both bad faith registration and use are required. For example, if a domain name was registered in good faith during the pendency of a business relationship with the Complainant but is later used in bad faith after the business relationship ended, that will generally be insufficient under the Policy (see 3.9 – Prior business relationship).
Additional Information
Relevant Decisions
Oris Holding AG v. On-Ramp Internet Services, WIPO D2024-1708, <oris.com>, Denied
As the Complainant has failed to prove to the Panel’s satisfaction that the disputed domain name was registered in bad faith, it is not necessary to consider the use of the disputed domain name as the point is moot.
Shenzhen Growatt New Energy Co., Ltd. v. Waqas Azfar, ADNDRC HK-2401866 (2024), <growattinverters.com>, Denied
The Respondent’s evidence shows that when he registered the disputed domain name, he was trying to help the Complainant and TCP International FZE to promote the Complainant’s products.
The Complainant must have been aware of the disputed domain name at some point between 2020 and 2022 when the two companies were working closely together. It found no reason to object to the use being put to the website.
South32 Limited v. South32, South32 is a trademarked film company, WIPO D2023-1808 <south32 .com>, 3-member, Denied
Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the disputed domain name has been registered in bad faith, and that it is being used in bad faith. These two requirements are conjunctive and each must be proved, on the balance of probabilities, if the Complainant is to carry its burden in connection with the third element of the Policy.
Writera Limited v. Baklan Iaroslav, CAC-UDRP-104234 (2022), <customwritings.co>, Denied
It is clear from the terms of paragraph 4(a)(iii) of the Policy as well as confirmed by numerous decisions under it that the two elements of this third requirement are cumulative; both registration and use in bad faith must be proved for a complaint to succeed.
Toast, Inc. v. Jared Isaacman / Harbortouch, Forum FA2208002007428, <toastpos.com>, Transfer
A significant question in this case is whether the Respondent acquired the disputed domain name before a time when Complainant had demonstrable rights in its TOAST trademark. This invokes the familiar concept that, since Policy ¶ 4(a)(iii) requires proof of both bad faith registration and use, and that if a domain name was acquired by a respondent prior to the coming into existence of a complainant’s trademark rights, targeting of the mark, and thus bad faith registration, is impossible…
The most likely reality is that the domain name was acquired by Respondent very early in 2021. As Complainant’s trademark rights were, by this time, well established through registration and, as the disputed domain name first resolved to the website of Complainant’s competitor in early 2021, the Panel concludes, by a preponderance of the evidence, that Respondent’s acquisition creates a new “registration” and that the disputed domain name was registered by the present Respondent with knowledge of Complainant’s trademark and with the intent of targeting it in bad faith.
GL Concepts, LLC d/b/a Goodlife v. Perfect Privacy, LLC / Amitava Saha, Firstcry, WIPO D2022-0451, <goodlife.com>, Denied, RDNH
The Policy requires the Complainant to establish that the Respondent has both registered and used the disputed domain name in bad faith. Since the Complainant has failed to establish bad faith registration, the Complaint must fail, and it is not necessary to decide whether the disputed domain name has been used in bad faith.
Chrisofix AG v. Sano-Trend Orthoservice GmbH, CAC-UDRP-103529 (2021), <chrisofix.com>, 3-member, Denied
However, applying the requirement that a Complainant show that both registration and use of a disputed domain name is in bad faith, the Panel concluded that the Respondent did not register the disputed domain name in bad faith, taking account of the then agreement between the parties regarding registration of the name, and the purpose for which registration took place, in the context of the Respondent’s then role as a distributor or seller.
Helen of Troy Limited v. Kim Ju Man, Forum FA2112001977582, <oxokorea.com>, Denied
In order to establish bad faith, Complainant must demonstrate that Respondent registered and has used the Disputed Domain Name in bad faith. Both are required.
Complainant has demonstrated that Respondent is using the Disputed Domain Name, which is confusingly similar to Complainant’s Mark, without Complainant’s permission for the purpose of intentionally creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of his website. Indeed, Respondent states he is using the Disputed Domain Name to sell his inventory of Complainant’s products. This conduct falls within the scope of Policy ¶ 4(b)(iv).
However, Respondent’s registration of the Disputed Domain Name on or about May 16, 2016, was not in bad faith.
Digest Commentary
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Digest Vol. 4.18 <foodclub.com>
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Digest Vol. 4.16 <lifeware .com>
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Digest Vol. 3.14 <retailinsite .com>