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Recent Case Notes & Commentary

COMMERCIAL DISPUTES – CAN THEY BE SOLVED USING THE UDRP PROVISIONS?

Thomas E. Wright v. Oliver Graham


FORUM Claim Number: FA1804001783404


21 May 2018


RATIO


A little dated, but very relevant nevertheless, this aforementioned matter reiterated that the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) cannot provide relief in cases that involve business and contractual disputes between the parties involved.


BACKGROUND


In Thomas E. Wright v. Oliver Graham, Thomas E. Wright (the “Complainant”) had contracted Oliver Graham (the “Respondent”) to maintain the Complainant’s information technology infrastructure. The dispute at hand concerned the domain name www.twrightassociates.com, registered with GoDaddy.com, LLC (“GoDaddy”) which is a domain name registration provider. The Complainant, being an insurance provider from Palestine, Texas, claimed to be the user of the trademarks THOMAS WRIGHT & ASSOCIATES and TWRIGHTASSOCIATES.COM, since about March 25, 2009 and therefore claimed to have acquired common law rights in such trademarks.


The Complainant alleged that domain name www.twrightassociates.com was identical or confusingly similar to the trademarks of the Complainant, and that the Respondent had hijacked the domain name for himself by registering it with GoDaddy, and was misleading consumers by operating the website with links to competitive businesses.

The Respondent on the other hand, contended that his business “Iron Horse” owned the domain name www.twrightassociates.com since merging it with the Complainant to form a new agency, thereby acquiring ownership interest in the domain name.


Review of the Shareholders’ Agreement between the Complainant and the Respondent stated, “Assets brought in and transferred are owned by the Iron Horse shall include and consist of all computers; all web site and domains, initial and subsequent, and any and all such business personal property including computer data.” The Respondent contended that he entered into a contractual agreement with the Complainant where the Complainant agreed to sell the domain name to the Respondent. The Respondent also accused the Complainant of engaging in fraudulent business transactions.


DECISION


The Sole Panelist, Vali Sakellarides, reviewed the matter and held that the basis of the dispute was a business/contractual dispute and it was therefore outside the scope of the UDRP Policy. The Panelist referred to the decision in Love v. Barnett, FA 944826 (Forum May 14, 2007) where the panel had stated:


A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.


The Panelist stated that such complex cases should be decided by courts than a UDRP panel. She also referred to a plethora of other decisions with similar ratios;


(i) Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) (“UDRP’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes”);

(ii) Bracemart, LLC v. Drew Lima, FA 1494699 (Forum Mar. 28, 2013) where the matter related to contractual interpretation and and/or whether the relationship between Complainant and Respondent was one of employer-employee or one of partnership, all of which was outside the scope of UDRP;


(iii) Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”);


(iv) Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”);


(v) Frazier Winery LLC v. Hernandez, FA 841081 (Forum Dec. 27, 2006) holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy


The lesson to be learned from this decision is that disputes involving business and contractual issues should always be dealt with by the courts, and not by arbitration using the UDRP.


At present, the domain name www.twrightassociates.com is no longer operational.


See also our earlier case note on H-D Michigan, LLC v. Jim Harley (NAF case no. FA1004001318741), 25 May 2010, in Domain Times on 31 May 2010.

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