"Past performance does not necessarily predict future results."
That's what the U.S. Securities and Exchange Commission requires mutual funds tell investors. But it's also true about domain name disputes.
Cases in point: In four recent proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), the operator of a large bank won two decisions but lost two others, despite a track record of having won more than 30 previous UDRP disputes.
The complainant was Webster Financial Corporation, and all four of the cases involved the same trademark (HSA BANK) and the same type of activity by the domain name registrant (pay-per-click sites with links for competing services). The differing decisions were all issued within a two-week period of time.
Here are the decisions:
- Webster Financial Corporation v. SATOSHI SHIMOSHITA, Forum Claim No. FA1611001704955 (January 3, 2017): Panel denied transfer of <hsbank.com>.
- Webster Financial Corporation v. Domain Manager / Affordable Webhosting, Inc., Advertising, Forum Claim No. FA1612001705353 (January 6, 2017): Panel denied transfer of <hssbank.com>.
- Webster Financial Corporation v. Zhong Wan / Wanzhongmedia, Forum Claim No. FA1611001704956 (January 9, 2017): Panel ordered transfer of <hasabank.com>.
- Webster Financial Corporation v. Domain Admin / Hush Whois Protection Ltd., Forum Claim No. FA1612001705381 (January 16, 2017): Panel ordered transfer of <hasbank.com>.
At first glance, it might appear that the opposite outcomes reinforce a criticism of the UDRP: that the 17-year-old domain name dispute policy is unpredictable and subject to the whims of panelists. That would be a mistaken conclusion.
Rather, the different decisions can be explained by what seems to be a simple but essential factual difference: In the two cases that Webster Financial Corporation won, the disputed domain names were registered after the company's trademark rights arose; and in the two cases that Webster Financial Corporation lost, the disputed domain names were registered before the company's trademark rights arose. The issue is critical to the "bad faith" element of the UDRP.
As the panel in the <hssbank.com> case wrote:
Respondent registered the domain name a full year before Complainant introduced the claimed mark to commerce. Respondent, therefore, could not have entertained bad faith intentions respecting the HSA BANK mark because it could not have contemplated Complainant's then non-existent rights in it either at the moment the domain name was registered or at any point in the succeeding year.
This conclusion, while not always consistently applied, is (as the panel noted in the <hsbank.com> case), the "consensus view" of UDRP panels, as described more fully in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition:
Generally speaking..., when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.
Whether the essential dates were overlooked by Webster Financial Corporation's attorney (the decisions indicate that the same attorney filed all four complaints), or whether the attorney argued that the panels should find bad faith despite the dates, is unclear. But one thing is certain: Webster Financial Corporation's previous UDRP victories — like those of any trademark owner — do not guarantee ongoing success, given that the facts may differ.
Indeed, of Webster Financial Corporation's prior winning domain name dispute decisions, at least a dozen involved the same HSA BANK trademark — and all had resulted in orders to transfer the domain names.
But the recent differing decisions are an important reminder that although trademark owners can often be encouraged by previous victories, they can't rely on them and instead must evaluate the merits of each dispute independently. Failure to do so could end a streak of winning UDRP decisions.
Written by Doug Isenberg, Attorney & Founder of The GigaLaw Firm