Recent Case Notes & Commentary

A UDRP PANEL OR COURT PROCEEDINGS?

dmarcian, Inc. v. Martijn Groeneweg / dmarcian Europe BV

FORUM Case Claim Number: FA2102001933397

Domain names: <dmarcian-europe.com>, <dmarcian.app>, and <dmarcian.email>

7 April 2021


The case of dmarcian, Inc. v. Martijn Groeneweg / dmarcian Europe BV (Claim Number: FA2102001933397) provides a very helpful example of the overlap between arbitration and courts, as well as the limits of the UDRP Panel. The decision is not unique, but is a good example of where UDRP panelists may dismiss a case because it is really a commercial dispute and is better for the courts to decide.

The UDRP arbitration process is deliberately designed to have a limited scope, in order to reduce time, costs and formality. This means that the UDRP Panel is restricted to making findings on the application of the Policy (i.e whether the domain name will be transferred or not), rather than investigating or determining complex factual matters or what are in reality general commercial disputes rather than domain name cases.

Therefore, often UDRP matters do not exist in isolation - rather, they provide one avenue for relief in the context of a bigger dispute between parties. Correspondingly, Paragraph 4(k) of the UDRP allows a party to start a lawsuit in court either before or after UDRP proceedings. Indeed, UDRP Panels will often conclude a UDRP decision by acknowledging that parties may (or must) wish to pursue litigation further for outstanding contract or intellectual property issues.

In dmarcian, Inc. v. Martijn Groeneweg / dmarcian Europe BV, the UDRP matter was complicated by an ongoing contractual dispute and litigation between the parties. The contents of this contract potentially set out the agreed rights of the Respondent to use the Complainant’s trademark - therefore are essential to determining the Respondent’s rights under UDRP 4(a)(ii).

Paragraph 18 of the UDRP Rules provides that in this situation the Panel shall “have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”. As the facts of the underlying dispute went to the heart of the UDRP determination in this case, the Panel faced an important choice of how to proceed. But it was pretty clear that this was a matter for the courts and not for a UDRP panel.

The Panel recognised the limit of its jurisdiction and its limited ability to elicit evidence in the same way that a court could, and very appropriately dismissed the Complainant’s claim. The parties of course remain welcome to return to UDRP proceedings following the outcome of the court proceedings.