Academic journal article Harvard Law Review , Vol. 127, No. 7
CYBERLAW--TRADEMARK LAW--WIPO ARBITRATORS UPHOLD CONJUNCTIVE VIEW OF BAD FAITH UNDER THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY.--Guru Denim Inc. V. Abu-harb, case no. D2013-1324, Administrative Panel Decision (WIPO Arbitration & Mediation Ctr. 2013), http://www.wipo .int/amc/en/domains/search/text.jsp?case=D2013-1324.
Under the Uniform Domain Name Dispute Resolution Policy (1) (UDRP), a system of international arbitration to which the majority of domain name registrants are contractually bound, trademark holders may seek cancellation or transfer of a domain name infringing upon their mark. Designed and maintained by the Internet Corporation for Assigned Names and Numbers (ICANN), the UDRP generally imports the principles of trademark law, yet it differs in one significant way: if a domain name was initially registered in good faith, it is immune to challenge under the UDRP regardless of present infringement. Recently, in Guru Denim Inc. v. Abu-Harb, (2) a panel of arbitrators revisited and upheld the statutory basis for the good faith registration defense, finding the website truereligion.com could not have violated the UDRP because it was registered in good faith. The two-panelist majority provided textual and precedential justifications for its position but articulated no clear policy rationale; in contrast, a third, dissenting panelist argued that the good faith registration defense was at odds with the purposes of both the UDRP and trademark law and should thus be discarded. Before future panelists are persuaded by the dissent's critique, it is important to supplement the majority opinion with a robust policy defense. Far from a mere artifact of text and precedent, the good faith registration defense serves vital policy concerns at the heart of the UDRP and protects the sui generis property right contained in a domain name. Future panelists should think carefully before discarding it.
In November 1998, Ibrahim Ali Ibrahim Abu-Harb of Riyadh, Saudi Arabia, registered the domain name truereligion.com as a blog through which to promote the Islamic faith. (3) In 2002, Guru Denim Inc., a California-based company, commenced use of the mark "True Religion" as a brand name for its jeans. (4) Over the next seven years, True Religion Jeans gained in popularity--so much so that in 2009, Abu-Harb noticed that his site was attracting up to 1000 hits a day from visitors seeking the jeans brand. (5) Seeing an opportunity, Abu-Harb severed the domain from his network of Islamic sites, added references to True Religion Jeans as well as paid links to Amazon.com, and put the site on the market for $380,000--a price he alleged was "reasonable ... for a domain name ... attracting 1000 hits per day." (6)
On July 19, 2013, Guru Denim filed a complaint against Abu-Harb's use of truereligion.com with the World Intellectual Property Organization (WIPO), a licensed arbitrator (7) for the UDRP. (8) To win under the UDRP, Guru Denim had to prove three elements: first, that the domain name was "identical or confusingly similar" to its registered mark; second, that Abu-Harb had "no rights or legitimate interests in respect of the domain name"; and third, that the domain name "ha[d] been registered and [was] being used in bad faith." (9)
Writing for the majority, presiding panelist Alistair Payne denied Guru Denim's complaint. (10) First, he swiftly established that truereligion.com was confusingly similar to True Religion Jeans. (11) Under the second element, however, Payne determined that Abu-Harb's decade of noncommercial religious proselytizing through his website suggested he retained some rights or legitimate interests in the disputed domain. (12) Even if he had no such rights, Payne continued, Abu-Harb would still win under element three. (13) The majority interpreted the phrase "registered and is being used in bad faith" (14) conjunctively--as laying out two separate requirements of bad faith registration and bad faith use, each necessary for a finding of infringement. …