In the first episode of what I plan to be an ongoing series of videos exploring important and interesting domain name dispute decisions — especially those under the UDRP, the Uniform Domain Name Dispute Resolution Policy — I discuss one of the most frequently cited UDRP cases: Telstra v. Nuclear Marshmallows.
As I explain in the video, this WIPO case is one of the oldest UDRP decisions (from February 2000) but is still frequently referred to more than 20 years later. Telstra v. Nuclear Marshmallows essentially created what is called the “passive-holding doctrine” under the UDRP, which explains how a domain name registrant can act in bad faith even if it is not actively using a domain name.
In the video, I discuss what happened in the case and how Telstra — the largest provider of telecommunications services in Australia — won a UDRP decision for the domain name <telstra.org> even though the domain name was not actively being used.
The panelist pretty quickly concluded that the domain name was registered in bad faith, but the reason Telstra v. Nuclear Marshmallows is important is because of the decision’s discussion of whether the inactive domain name was being used in bad faith. And here’s what the panel wrote:
…the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.
And, indeed, the UDRP panel ultimately found that Nuclear Marshmallows was acting in bad faith, referring to a number of circumstances that supported this conclusion. In the video, I explain what those circumstances are.
Watch the video below (7 minutes, 42 seconds) or on the GigaLaw YouTube channel.
