Recent Case Notes & Commentary

Evasive and Misleading Complaints never end well

Gerard & Laura Murtagh, trading as Wheelchair Cars Ireland v. Donal Murtagh Mobility Ltd.

Case No. DIE2019-0006

November 18, 2019


As a recourse for intense and complex family and business disputes, the UDRP has little to offer. However, cases involving such disputes appear somewhat frequently. Although many of these disputes are usually better left to the courts, they will still be assessed by a panel according to the rules of the Policy. In these often-messy cases, parties can obscure facts and not disclose things they should have, ultimately putting themselves in a worse position. The following case, while little more than a shambolic dispute not suited for the UDRP, serves as a warning to Complainants: Panels are not going to look kindly on deliberately evasive behaviour.


The Complainant primarily argued that the Respondent held no history in the wheelchair car industry, and used the disputed domains to direct traffic to their business’ website “www.dmmobility.ie”. This website did not feature any of the terms used in the disputed domain. In the eyes of the complainant, this indicated that the Respondent was both committing the tort of passing off, and using the domain names in bad faith by taking advantage of the Complainant’s business’ reputation which it had built-up over the years.

Both parties in this dispute operate wheelchair car businesses

Conversely, the Respondent argued it had indeed been involved in that industry for years, and that its IP rights in the domain names had been transferred to it from the original, now defunct company for which both parties worked. It argued that the Complainant omitted some relevant facts, and that ultimately the disputes between the parties could only really be resolved through courts.


In making its finding, the Panel made it clear that the most important issue in this case was determining whether the Respondent had acted in bad faith. Given both parties asserted long-standing rights in the domain names dating back to their dealings in their prior company, this was not as straightforward as a clear cybersquatting case. For the complaint to be upheld, the Complainant must have proven it held exclusive right to these domain names; a difficult task given the complex history between the two parties.


In making its decision, the Panel found that the context surrounding the registration of the earliest three domain names was significantly different to that of the fourth. In the earlier instances, the domains were registered at such an early point after the dissolution of the first company that it was unlikely that the Complainant could claim exclusive rights to the domain names at that time, and unlikely that it could have amassed a significant enough reputation in its new business name for it to be taken advantage of. Given bad faith registration could not be proved, the panel dismissed the claim with respect to those domains.


However, given the fourth domain was registered by the Respondent in 2018 after it was mistakenly allowed to lapse, the panel was inclined to believe that the Respondent’s dominant motive in registering that domain was to capitalise on the Complainant’s rights, and thus ordered the domain to be transferred.


While a relatively uncontroversial finding, this case did raise some important issues. Firstly, although the Complainant alleged the Respondent was committing the tort of passing off through its use of the disputed domains, it is worth reminding that the UDRP and related policies are not the forums to address such claims. That is a matter for the courts, and as always, the UDRP does not preclude any such action or court outcome.


In addition, it is clear that the Complainant significantly hindered its own case by being deliberately evasive and misleading. It suggested that its own business had been running for much longer than the 5 years it had been, and also suggested that his brother was unconnected with the Respondent, obscuring facts which may hinder its arguments. Such behaviour is never going to look good in the eyes of the panel, who put bluntly that:


“The Complainant would have been well advised to provide a more candid account of the background facts.”


Evidently, it is much better to be for a complainant to be clear and upfront with background facts; instead of ignoring or obscuring things which may weaken your claim, one’s chances of success are increased greatly incorporating them into their argument with a proper explanation for their occurrence. If this is unable to be done without the claim unravelling, the complaint was probably never going to get off the ground anyway.

While this complaint may be done and dusted, the dispute between the two parties is far more wide ranging and complex than what the UDRP has to offer. While the outcome of their future legal action is unknown, it remains clear that the battle between these two is far from over.