Recent Case Notes & Commentary

DISPUTES OUTSIDE THE UDRP

J&M Manufacturing, LLC / Jesse Myers v. marwan taweel / 1982

FORUM case Claim Number: FA200400189423 (June 18, 2020)

<avidhemp.com>

Business and Contractual Disputes are often outside the scope of the UDRP

The UDRP aims to be a relatively efficient mechanism for relief in situations involving cybersquatting, and clear attacks on a party’s trademark rights. It is, however, a less effective tool for determining complex business / contractual disputes, especially those where parties cannot agree on material facts. Such disputes often fall outside the scope of the UDRP, as we can see from the result in a recent case, concerning the disputed domain name <avidhemp.com>.

The Complainant and Respondent in case had a prior business relationship with each other (the exact nature of which could not be agreed by the parties), involving the sale of hemp and CBD products. This relationship broke down, with the Respondent claiming that court action was underway concerning a breach of partnership agreements, and each party claimed it held trademark rights in AVID HEMP.

Given that the panel believed that each party may have had rights in the disputed domain names, it found that the case was outside the scope of the UDRP, on the grounds that it was not an ‘abusive cybersquatting case’ but a ‘contractual or legitimate business dispute’, better relegated to the courts.

In addition, it was clear that both parties differed on key facts relevant to the dispute. Given that the UDRP does not equip panellists with comprehensive fact-finding tools that can help determine the credibility of parties’ accounts, panels will often decline to make contentious findings of fact. The courts are much better suited to doing so, and as a result a panel is likely to dismiss a proceeding.

Given the complex dispute before it, the panel found that the dispute is outside the scope of the UDRP, and dismissed the proceeding without prejudice. However, there are competing views as to whether a panel can actually dismiss a claim without prejudice. Check out our note on the topic for further discussion on this issue.

Nonetheless, this case serves as an important reminder that the UDRP remains an avenue to provide relief to victims of cybersquatting and abusive domain name registration. Legitimate disputes are best left to the courts.