Recent Case Notes & Commentary

IS THE UDRP ONLY SKIN DEEP?

IP disputes and the scope of the UDRP: What are you really asking for?

Symphony Holdings Limited v. Jaimie Fuller, Fuller Consultancy F.Z.E.

WIPO Case No. D2019-2887

March 5, 2020

Another case has arisen showing the reluctance of UDRP panels to get involved in disputes other than cybersquatting cases and especially not to get involved in general commercial disputes, even if, peripherally, they may concern a domain name.

The UDRP is sometimes is misunderstood as being a mechanism for resolving commercial disputes which involve trademarks or domain names in some way. The scope of the UDRP, however, is too narrow to deal with such disputes and issues of IP ownership or contractual matters. The Policy is only capable of dealing with disputes based on abusive cybersquatting.

In Symphony Holdings Limited v. Fuller Consultancy the Complainant made a number of allegations which radically missed the mark with respect to questions that the UDRP is capable of resolving. It seemed that the only reason it sought recourse through the UDRP is that the property about which ownership was disputed, happened to be a domain name which is not enough to give jurisdiction to the UDRP panel. The result was that the case was dismissed.

Symphony Holdings alleged that Fuller (the Respondent) had unlawfully acquired the domain name <skins.net>; that it had unlawfully licensed its use to a third-party company; and that they had been unlawfully prevented from obtaining evidence for their submission. Their case had to be dismissed because none of those allegations sound under the UDRP. They should be left for a court of competent jurisdiction.

The facts giving rise to the matter are interesting nonetheless because they are illustrative of a situation worth avoiding at all costs when IP rights (including domain name ownership) are being assigned under contract.

Disputes over IP ownership will not be resolved by the UDRP

Symphony Holdings claimed that they had acquired all of the IP belonging to Skins International Trading (SIT) at auction when it went into liquidation in 2019. Skins was a company involved in skin care products. They said their purchase included the Australian-registered SKINS trademark and the <skins.net> domain name. However, Fuller said they had previously acquired the domain name from SIT under a contract in 2018. Fuller also claimed that Symphony Holdings did not own the trademark at all, which was supported by the fact that Fuller Holdings failed to provide evidence of their ownership of either the trademark or the domain name. This could have been because of the nature of the assignment of the IP rights and those rights not being reflected in the registry (which showed SIT was still the trademark owner).

A further issue for Symphony Holdings was that Fuller had subsequently transferred the domain name to a third-party business in Australia and therefore might not have even identified the correct Respondent.

Can Jurisdictional issues be ignored?

In summary, as the panel said , “the Panel does not have the benefit of witness testimony, disclosure of documents, or the other appropriate instruments that are typically available to assist a court to resolve a Parties’ dispute” but if Symphony Holdings had furnished a legitimate UDRP claim, the panel may have proceeded to consider any abusive use of the domain name per the Policy.

Limited though the scope of the UDRP may be, erroneously requesting a panel to resolve certain business disputes will not prevent you from having a legitimate claim resolved if the submissions contain it.

For more commentary on the scope of the UDRP and commercial disputes that might be outside the Policy, see out other articles in Domain Times on this issue:


Significant Factual Disputes are Often Outside Scope of the UDRP


Scope of UDRP - Other Proceedings on Foot


The Scope of the UDRP does not Extend to Disputes Arising from Commercial or Family Matters


Complex Factual Disputes Fall Outside the Scope of the UDRP