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Recent Case Notes & Commentary

Significant Factual Disputes are Often Outside the Scope of the UDRP

Buffalo-Erie Marathon Association, Inc. ("BEMA") v. John Elliott

WIPO Case No. D2019-0638

16 May 2019

While some cases are relatively straightforward for UDRP Panels, and others involve the careful consideration of extensive evidence that is balanced between both parties, it is clear that disputes may actually fall outside the UDRP and are better left to the courts.

The Case

The case under consideration involves a long running history between Complainant and Respondent and comprises significant factual disputes between both parties. The

Complainant, a non-profit organisation that organises the Buffalo Marathon, brought a case under the UDRP for the disputed domain name <>.

The complainant holds a word mark for BUFFALO MARATHON with the US Patent and Trademark Office, registered on 16 February 2016. This registration indicates a first use of the mark in May 2001.

However, 16 years prior to that, on 28 February 2000, the disputed domain name was registered by respondent, who was previously a “vendor” for the Buffalo Marathon.

The case’s record contains a lengthy account of factual disputes between the Complainant and Respondent involving the relationship and interactions between the two parties on issues like how the Respondent Elliot came to register the domain name in his own name, and the capacity in which the Respondent was involved in managing the online affairs of the Complainant. However, as the panel noted, the record did not include any documents which revealed whether both parties understood that the Respondent would be registering the domain name, and the form the Respondent’s services for the Complainant would take.

The Complainant eventually terminated Elliott’s services and demanded he turn the domain name over to it, but he refused.

The Panel’s Findings

In the absence of a reliable factual record, it was always going to be hard for a panel to find bad faith use or registration. The panel noted the lack of “competent evidence” that the Complainant held any trademark rights in BUFFALO MARATHON before the disputed domain name was registered by the respondent, and that due to the sheer number of disputed issues of fact, it was hard to make any finding in favour of either party within the limited scope of the UDRP.

The Panel then did the only thing it could do, state that the onus was on the Complainant to prove bad faith and then to find that it had not proved its case.

Certainly there was no evidence that the Complainant had trademark rights in BUFFALO MARATHON when the domain name was registered.

Nor was there evidence that Respondent knew in February 2000 that anyone was planning to revive the annual Buffalo race and call it the “Buffalo Marathon”.

Nor was there evidence of any agreement that Elliott would use the domain name for registering runners in the Marathon (or, presumably, not use it for that purpose).

Rather, the Panel denied the Complaint, ruling that a resolution of complex factual disputes of this sort was outside the scope of the UDRP Policy. UDRP panels are not courts and are simply not equipped to conduct detailed factual inquiries. As the Panel put it:

“The Policy is designed to address clear cases of cybersquatting, and the streamlined process accompanying a dispute under the Policy is ill-equipped to address cases where there are gaps in the record and conflicting accounts which cannot be cured or reconciled through the process of discovery, cross-examination, credibility assessment, and so forth. Whether Complainant has any sort of viable legal cause of action against Respondent outside the narrow confines of the Policy is not for this Panel to consider.”

UDRP panels are therefore likely to send complainants away empty handed in cases like the present.


While the respondent asked for a finding of Reverse Domain Name Hijacking, the panel declined to do so, as it was unable to confirm on the available evidence whether there had been any “misstatements of a deliberate nature by either party.”


While the complainant may have been looking for a quick solution under the Policy, cases such as this demonstrate that UDRP action in instances where the parties significantly disagree on the factual record may well be just the beginning of a marathon of legal action- and sometimes are!

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