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UDRP Panelists Still Can’t Agree on Decisions

September 7, 2010andrew christie, Domaining, Domainnamewire, Policy & Law, scott donahey, udrpComments Off on UDRP Panelists Still Can’t Agree on Decisions

Drug company loses dispute, but panelists disagree over key point.

A recent UDRP brought by drug giant Sanofi-aventis is interesting on a couple counts.

First, the company lost the case over the domain name ferrlecit.com. The respondent is a former licensee of Sanofi-aventis. It registered the domain name while it was a licensee. So it was registered in good faith. But when the drug company and licensee terminated their relationship through arbitration, there was no mention of what to do with the domain name. (Another example of lawyers overlooking an important part of intellectual property.) The respondent kept it, and now Sanofi is arguing it is being held in bad faith.

The UDRP states that, to be found “guilty”, you must have registered and used the domain in bad faith. Yet in this case it appears it was registered in good faith, but subsequently used in bad faith.

Two panelists agreed that the domain wasn’t registered in bad faith. Even though it may have later been used in bad faith, this doesn’t matter because of how the UDRP is written.

But one panelist disagreed, and it should come as no surprise as to who it is.

M. Scott Donahey has been on somewhat of a crusade to change how panelists view the registration and use clause to be registration or use. He has done this with the help of panelist Andrew F Christie. The pair keep referring to each others’ views on the matter which in turn reference their own decisions and views. It’s really quite entertaining.

Donahey is also the one who penned one of my candidates for “dumbest UDRP analogy ever“:

As this Panelist sees it, the majority’s interpretation elevates form over substance. The approach taken by the majority is the equivalent of applying the scienter test in the case of a shooting not only to the shooter’s state of mind at the time he fired the gun, but also to his state of mind at the time he purchased the gun. Thus a man who purchased a gun with the intent to engage in target practice would be free thereafter to shoot his neighbor with impunity.

I wonder how long it will take for Christie to refer to Donahey’s most recent decision.


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