In this case study video, I discuss what (sometimes) happens if a domain name registrant agrees to transfer a disputed domain after a trademark owner files a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP).
As I explain in this case, the registrant of the domain name <bergmanandbowen.com> said that he was “ready and willing to transfer the Domain Name to the Complainant” after the UDRP complaint was filed. Apparently, the registrant and the Complainant (who used the domain name <bergmanbowen.com> — without the word “and” in the middle) had a prior business relationship.
in almost all domain name disputes, the panel must evaluate the UDRP’s three-part test to determine the outcome. Specifically: (1) whether the domain name is identical or confusingly similar to a trademark in which the complainant has rights; (2) whether the domain name registrant lacks rights or legitimate interests in it; and (3) whether the domain name was registered and is being used in bad faith. The UDRP system makes clear that the burden of proof is always on the complainant, that is, the trademark owner that filed the case, and that a failure to prove any one of the three elements would result in a decision allowing the current registrant to retain the domain name.
However, in this case, as I discuss in the video, the UDRP panel wrote:
In a circumstance such as this, where Respondent has not contested the transfer of the Domain Name, but instead agrees to transfer the Domain Name to Complainant, the Panel is authorized to forego the traditional UDRP analysis. This Panel, in recognition of the common request of the parties, in the interests of judicial expedience, and in the absence of any aggravating circumstances, has so decided to forego the traditional UDRP analysis and to order an immediate transfer of the <bergmanandbowen.com> domain name.
That’s an interesting outcome, and it’s one that many other UDRP panels have reached in similar situations — but it’s not always what happens when a registrant consents to a transfer. In some cases, UDRP panels still proceed to a decision on the merits. In fact, the WIPO Overview provides five examples of when it would be appropriate for a panel to disregard a domain name registrant’s consent to transfer, which I discuss in the video.
Of course, no trademark owner should ever count on this sequence of events, which is why I always draft the strongest possible UDRP complaints for my clients, to convince a panel on all three elements of the policy, even if a registrant consents to transfer.
