NEW YORK, NY – Imagine if you had your super premium domain name stolen from you, legally, and there was absolutely nothing you could do about it – and nothing you could have done to prevent it, because you never actually did anything wrong in the first place?
Holy Smokes; Sounds Terrible Right? Here is the Scenario.
You register a domain name for a unique word or phrase which is not currently in use. There are no current sites using the word, no trademarks on the term, and the word is unique, so you register the .com domain name and hold onto it until you are ready to build your website.
You’re the original domain registrant.
Years later the word becomes semi-popular, maybe even super popular, and people begin to use the word and people begin to visit the website. This is great because you’ve gotten lucky and you had the right thought at the right time; you registered a great name and will benefit from your great foresight, for years to come.
Again, great news for the original domain registrant.
BUT, “Company ABC” sees how great this word would be as their brand and begins using the word as their name. They register the name.org or .net, and realize how great it would be if they only had the .com. Company ABC then hires some lawyer and registers a trademark for the nice little short word, and then comes after you, the original registrant, accusing you of trademark infringement. They do this as they have discovered a clever way to steal the domain, through a UDRP process, because now, years later, they have applied and succeeded in securing a registered trademark for the word.
So, Company ABC, together with their newly registered trademark, then initiate a UDRP process and you now find yourself in a heated battle over your domain name, which you originally registered without any intention to profit off of another. You took it upon yourself and happen to register a great domain and now you find yourself defending a costly trademark dispute which threatens to steal your domain.
Ordinarily you would have nothing to worry about as this attempt would be ‘absurd’ and a complete waste of everyone’s time, because your domain registration pre-dates the registration of the trademark; it is obvious you did not register it to infringe.
Here comes the bad news.
It’s abbreviated by an “RBF” which stands for “Retroactive Bad Faith” intent. Retroactive Bad Faith has been used as an accusation basis for companies to claim that even if a domain name registrant registered a name years prior, and they didn’t have bad faith intent when they originally registered the domain name, since they continually renewed the domain name, year after year, after someone else began using the word, that A) that renewal should be considered Retroactive Bad Faith or “renewal in bad faith”, and B) the domain should be transferred to the new owner of the mark, regardless of how long you have had the domain, or how much you may have paid for it.
Wow, how horrible?
The basis for this finding is that the original registrant of the domain, despite being first to register it, and despite no-one else at the time using it, the original registrant should have policed any future uses of the word, each year the domain name came up for renewal, and since they did not, or even if they did and continued to keep the domain, they have now failed to abide by their responsibilities of a registrant.
This actually happened and has become a significant threat to domain name owners and investors, where a name could just be stolen through this process. The RBF theory was used to justify the transfer of Camilla.com, an aged domain name from the estate of late domain investor Igal Lichtman to the owner of a future trademark. You can read more about it on Domain Name Wire.
So Can This Really Happen?
Well, here is where some good news comes to light. The chances of this happening to you, me, and every other domain name registrant is less likely, (I won’t say there is no chance, but less likely) as the ICA, the Internet Commerce Association, has been long advocating against the consideration of Retroactive Bad Faith, which again, is basically just a means of stealing a domain via the Uniform Domain-Name Dispute-Resolution Policy simply because it is desired.
The ICA has recently applauded the World Intellectual Property Organization (WIPO) for removing misleading guidance commonly known as the Retroactive Bad Faith theory. So if anyone ever wonders what the ICA does behind the scenes for domain owners, this is a pretty solid example.
Without intelligent minds behind efforts like this, everyone loses.
If you are domain owner and are not a member of the Internet Commerce Association, you should consider becoming one, because aside from other benefits you’ll receive, you can rest assured your dues are going towards fueling efforts such as these. If you are already a member, you’ve helped make sure your entire domain portfolio, and mine, is in a safe place, our registry accounts, and that they remain there until you and I decide to move them.
If you are interested in a lot of intricate details and explanations, as well as case law and decisions in regards to the Retroactive Bad Faith theory use the following links: