By Steve Levy
Transferring a domain name after a successful UDRP proceeding may appear to be a simple administrative step, but a recent decision shows that this stage can be fraught with risk if not handled the right way. The decision is a clear reminder that Complainants must follow the correct procedure and must understand exactly where the transfer code will be sent before initiating any action with the registrar.
In this case, the Complainant had already prevailed in an earlier UDRP proceeding concerning the exact same domain name. The registrar holding the domain name was instructed to transfer it to the Complainant and, as typically happens, the domain name was placed into a free account at the registrar which was set up for the Complainant’s benefit. The problem arose only when the Complainant attempted to move the domain name from that registrar account to a different account at its own preferred registrar. The prior registrar had not disabled privacy protection for the domain name and, as a result, when the Complainant requested the authorization code needed to complete the transfer, the code was automatically sent to a privacy shielded email address controlled by the Respondent who had just lost the UDRP case.
Armed with the authorization code, the Respondent initiated a transfer of the domain name into its own account at a completely different registrar. The Complainant attempted to reverse the transfer, but the prior registrar wasn’t able to assist. This forced the Complainant to file a second UDRP complaint to regain control of the domain name it had supposedly won.
Despite there being no website associated with disputed domain name, the Panel found that the Respondent’s misuse of the errant transfer code was, itself, compelling evidence of bad faith under paragraph 4(a)(iii) of the UDRP. The Respondent’s conduct demonstrated an intention to retain control of a domain name that was confusingly similar to the Complainant’s mark and to frustrate the Complainant’s rights despite a prior order requiring transfer of the domain. The Panel emphasized that passive holding (non-use) does not prevent a finding of bad faith when the surrounding circumstances show improper motives.
Also, while refiling of UDRP complaints is typically not permitted, the Panel accepted it in this case as the earlier UDRP case was not a denial and, in fact, ordered a transfer of the domain name. Also, there were new facts and evidence that weren’t available in the prior case (i.e., the Respondent’s improper use of the transfer code).
For successful Complainants, the lesson is straightforward. Vigilance during the transfer process is just as important as the UDRP complaint itself and, after a successful UDRP decision, it is essential to confirm that privacy services have been disabled and that all contact information associated with the domain name is accurate and under the Complainant’s control. Before requesting a transfer authorization code, the Complainant must know exactly which email address will receive it. A simple oversight at this stage can undo the benefit of a successful proceeding and may require additional filings and expense to sort things out. However, careful attention to registrar procedures can prevent unnecessary complications and ensure that the Complainant secures the rights it has worked to enforce.