In this case study video, I explain an interesting case in which a cybersquatter used a logo that caught Amazon’s attention:
Not surprisingly, Amazon filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP), which resulted in a decision ordering transfer of the domain to Amazon.
What makes this UDRP case worthy of discussion is the fact that the cybersquatter apparently changed the logo to something completely different after it was contacted by Amazon:
So, the question it raises is whether doing so can evade the “bad faith” element under the UDRP, which requires a trademark owner to prove that a disputed domain name “is being used in bad faith.”
In other words, can a cybersquatter avoid a finding of bad faith by changing its actions (in this case, a logo) after a UDRP complaint has been filed? The short answer, according to the decision in this case, is no. Specifically, the panel wrote:
Any changes on the manner used in terms of logo appearance or even website content that may occur following the filing of the Complaint under review are not sufficient to rebut the element of bad faith use, for various reasons, one of them being the very same ability of changing back, at will, to any past or other potentially even more resembling variations on any given time.
In this video, I explain that this UDRP decision is good news for trademark owners and bad news for cybersquatters who think they can be clever by exploiting a loophole in the UDRP’s bad faith element. Under this decision, no such loophole exists, and the second half of the bad faith test simply requires a showing that bad faith applies when the complaint is filed and that any later changes by a domain name registrant are irrelevant.
And, perhaps even more broadly, this decision makes clear that trademark owners should consider when and even whether to contact a cybersquatter before filing a UDRP complaint. This is a conversation I often have with clients, some of whom are eager to see if or how a cybersquatter might respond to a demand letter, but the best approach is not always clear and instead should be considered as part of a comprehensive strategy that evaluates the factual and legal issues of the dispute.
