NAF Panelist enables theft of 11-year-old domain fobus.com

In the fobus.com decision, an NAF panelist permitted the Complainant to seize the fobus.com domain even in the absence of any specific evidence that the domain was registered in bad faith.

The respondent didn’t help himself by failing to respond to the Complaint, but even relying on and accepting all the arguments presented in the Complaint, as they are outlined in the decision, there was no evidence of bad faith registration that could have justified transferring the domain.

Relevant facts cited in the decision-

1.  Fobus.com was registered by a South Korean in April 2002

2.  Complainant Fobus International is an (Israeli) maker of handgun holsters.

3.  Fobus Intl relied on their US trademark which as the panelist notes was only a design mark and was not issued until October of 2002.

4.  Recently fobus.com went to a parked page that showed links to competitors of Fobus International.

If the panelist had access to the US Trademark, which it would seem that he did since it would have been an exhibit to the complaint, then he would have seen that-

1.  The trademark was not published for opposition until July 2002.

2.  The trademark application states that ‘The name “Fobus” is the name of the small moon of Mars.  The origin of the name is from Greek mythology.’

(The more common English spelling is “Phobus”, so “Fobus” is a variant spelling.)

The key question here is whether fobus.com was registered in bad faith.

Based on the above facts there is no evidence at all that fobus.com was registered in bad faith.

“Fobus” is a generic, variant spelling of a moon of Jupiter and a character from Greek mythology.  The domain was registered before the US trademark was issued or even published for opposition.  The registrant is South Korean so there is no expectation that he would have been aware of an Israeli maker of handgun holsters.

In other words, even in the absence of a response, the Complaint contained no evidence that the Respondent registered fobus.com in bad faith.  The panelist should have denied the complaint.

So how did the panelist conclude that fobus.com had been registered in bad faith?  He misapplied a section of the UDRP, 4b(iv), that states that using the domain to create a likelihood of confusion for commercial gain can be an example of registration and use in bad faith.  Since the fobus.com was parked with links to competitors, the panelist concludes that the ‘registered and is being used in bad faith’ test had been met.

To be fair, this section of the UDRP discussing “use that creates a likelihood of confusion” is itself very confusing.  It can be interpreted in various ways.  One of those ways boils down to ‘evidence of bad faith use is sufficient to find evidence of bad faith registration‘.

This interpretation means that the ‘registration in bad faith’ requirement is superfluous, as bad faith use alone would also imply bad faith registration.  For this reason, among others, the interpretation that bad faith registration can be found based on bad faith use alone has been rejected by a majority of panelists.

The proper interpretation of this poorly written section of the UDRP has been the focus of heated debate among panelists.  It is likely the most controversial aspect of the UDRP.

The most comprehensive treatment of this issue was in the WIPO simplybusiness.com decision from 2011.  A three member panel that included Andrew Christie, the leading advocate of the ‘bad faith use is enough’ interpretation, found by majority decision (with Christie in the minority), that the ‘bad faith use is sufficient’ interpretation is fatally flawed.

The majority’s thorough analysis of the issue goes on for several pages. It shows that the interpretation that bad faith use can be sufficient evidence to meet the bad faith registration test doesn’t stand up to a careful analysis.   Andrew Allemann has a good write-up of the controversy here.

Christie’s misinterpretation of the UDRP has created untold mischief, and has led to attorney John Berryhill to force him to face the consequences of his meddling with the policy.

The panelist in fobus.com falls short in a few different ways.  He relies on a discredited interpretation of the UDRP to justify the transfer of fobus.com in the absence of any specific evidence that the domain was registered in bad faith.

Although the panelist was not obliged to do so, it would have demonstrated a conscientious concern for his duties if he had taken two minutes to go to Archive.org to check how fobus.com was used back in 2002 rather than simply assume that the domain was registered 11 years before for the purpose of several years later displaying a parked page with advertising links.  He would have found that fobus.com was used for a travel reservation web site.

To his credit, the panelist recognized that the long delay in bringing the complaint is cause for concern-

Panel notes with concern that there is no explanation in Complaint as to why these Administrative Proceedings were brought almost 13 (sic) years after registration of the domain name.

Although it appears more likely than not to Panel that the original registration of the domain name was made in the knowledge of Complainant’s trademark and business, the delay in bringing these proceeding is of such a magnitude that it should require explanation.

In the absence of a Response and in light of relatively unequivocal evidence of domain name abuse, Panel finds that there is insufficient reason to apply principles of laches but cautions Complainant to be more alert to that possibility in the future.

Yet this 11 year delay (not 13 year) should have caused the Panelist to act with more restraint before ordering the transfer of fobus.com.  Note the use of the phrase ‘although it appears more likely than not’.  The standard for a UDRP is supposed to be ‘clear cut cybersquatting’.  Speculating on the respondent’s state of mind 11 years earlier based simply on recent use of the disputed domain as a parked page and then applying a standard of ‘more likely than not’  is a much lower standard than ‘clear cut cybersquatting’.

The fobus.com case is one more example of how the criteria in the UDRP are being watered down so much that the UDRP can now easily be misapplied to steal domains even in the absence of any evidence of bad faith registration.