Forum Claim Number: FA1911001872262
December 12, 2019
The result in UDRP disputes can be affected by contractual agreements or other commercial arrangements between parties. JMB Aircraft entered into an exclusive license agreement with Justfly for the promotion and distribution of certain aviation products in the US. Justfly was required to use its own website under the domain name <jmbaircraft.us> , which Respondent had registered, and incorporate an entity called JMB Aircraft USA at the request of the Complainant in order to carry out their work under the contract – effectively as an agent for JMB Aircraft. The agreement was later terminated by the Complainant who then attempted to claim the domain name from Justfly.
In order to succeed, the Complainant had to prove that the Respondent did not have a right or legitimate interest (an RLI) ( in the use of the domain name per paragraph 4(a)(ii) of the Rules. The key question was whether Justfly’s use of <jmbaircraft.us> (which is identical to Complainant’s trademark) was in connection with a bona fide offering of goods or services and therefore granted Justfly a legitimate interest in the domain name.
It was decided that the contractual agreement between the parties is what created Justfly’s right to the use of the domain name in the first instance. Ordinarily the termination of the agreement would also strip the Respondent of its interest in the name, however, that is not what happened in this instance. Looking to the case of American Express Marketing & Development Corp. v. Planet Amex and Blake Fleetwood, the panel decided that because JMB Aircraft had knowledge of how the domain name was being used and waited several years to bring their claim, they had acquiesced in Justfly’s continuing use of the domain name. By doing so, it forfeited its chance to claim that Respondent had no right to use the domain name. The Complainant therefore had an RLI because it had used the domain name properly and with the knowledge and consent of the Complainant.
Terminating a contract which was the reason for registering a domain name will also have implications for the ‘bad faith’ analysis. After all, how can someone be said to have registered a domain name in bad faith if they were required to do so under a contract? If you hope to ‘play it safe’ it would be best not to assign rights to a domain name under a contract at all if you can avoid it. Doing so could make it quite difficult to get the domain name back.