It is sometimes said that the domain name arbitration process under the UDRP and its related processes for some of the country-code processes (e.g. .co.uk or .com.au) is not appropriate for general commercial disputes. Here are two recent examples of where panels have said : ‘ Go off to court; you case cannot be dealt with under the UDRP’.
NewsNow Publishing v Adam Corelli (1st October)
The complainant, NewsNow, a UK based news delivery service, brought proceedings under the UDRP against the respondent, a Canadian freelance journalist. At dispute was the domain name <newsnow.com>, which was registered by the respondent in 1997.
Complainant’s Contention
Having been established as an internet news provider since 1997, the complainant had registered various domain names such ‘newsnow.co.uk’ and ‘newsnow.net’, generating millions of unique visitors to its websites each month. The complainant registered the ‘NEWSNOW’ mark with USPTO in 2012 and argues the respondent ‘s use of the identical mark creates confusion for users. The complainant contends that the respondent had no rights or legitimate interest in the disputed domain name, as it not been developed since its registration and was being used solely as hyperlinks to third parties or as a platform advertising the sale of the website. The complainant alleged that the respondent’s primary intent was simply to sell the disputed domain name at a significantly inflated rate, and in doing had engaged in bad faith.
Respondent’s Contention
In turn, the respondent claimed its registration of the domain name was prior to the complainants first-use of the NEWSNOW mark. Furthermore, the respondent contended that the complainant’s delay between initiating filing for the NEWSNOW service mark from USPTO in 2000 until it was ultimately granted in 2012 was due to the generic nature of the term “news now”. The respondent argued his failure to develop the website was not an indication he lacked any rights or legitimate interests in it, but instead was due to a breach of contract by the complainant. The respondent contended the two parties had an agreement for the complainant to purchase the website in 2000 for the sum of £30, 000, and that the respondent subsequently failed to perform to their contractual obligation and pay the decided amount.
Contractual Issues
Both parties made additional submissions to the panel regarding the issue of whether a contract had been concluded for the purchase of the domain name by the complainant.
The Panel’s Decision
Ultimately, the panel decided that the dispute was outside the scope of the UDRP and the UDRP was not the appropriate forum to make a ruling on the matter. The panel refrained from delving into the relatively complex matters of contractual formation, which would require further evidence, because this was not purpose of the UDRP. Rather, the policy is “designed primarily to address the practice of cybersquatting” and is not to be used “as a means to resolve all disputes involving domain names”. Accordingly, the panel dismissed the complainant’s application to have the domain name transferred.
Freetech Services v N/A (29th September 2014)
The complainant, Freetech Services, had used its website, <PASS4SURE.com> since 2005, to offer study materials in preparation for IT certification examinations. The disputed domain registered was <pass4sureexam.com>, which like the complaint’s website, was used by the respondent as a platform to sell IT exam preparation resources.
Complainant’s Contentions
In 2010 the complainant registered a device mark in China, assigning the rights to complainant in 2014.The complainant registered the domain name <PASS4SURE.COM> on 8 July 2005, three months prior to launching the website in November 2005.
The complainant alleged that the respondent was using the domain name <pass4sureexam.com> as a means to deceive users they were purchasing authentic PASS4SURE.COM study materials. In effect, the respondent was attempting to pass itself off as the complainant, confusing customers to believe that they were purchasing legitimate PASS4SURE.COM study materials by using a deceptively similar domain name.
Respondent’s Contentions
The respondent argued that the complainant rights were “suspect”. The respondent then put forward a number of points disputing the legitimacy of the complainant’s use of the trademark. The respondent argued from the evidence the true owner of the domain could not be ascertained, or that the contact information did not explain the identity of the complainant. Furthermore, the respondent contended that the alleged registered Chinese trademark translating the assignment did not confirm the owner of the trademark was in fact the complainant, as it had been neither sworn nor certified by SAIC. The respondent further argued that there was a lack of evidence outlining which entity the assignment had been filed with.
The respondent continued by disputing that there was any similarity between the marks at all, as the complainant is now using a distinctly different design and device mark from the one registered with SAIC. In addition to the alleged change of the design that has significantly altered its appearance since initial registration, the respondent put forward evidence that a number of countries had already failed to recognise the complainant’s PASS4SURE trademark, resulting in the complainant withdrawing several trademark applications.
The Panel’s Decision
In dismissing the complainant’s application, the panel did not analyse the elements under paragraph 4(a) as it was determined that the dispute fell outside the scope of the policy. With much case law supporting the decision, the panel decided that legitimate disputes falling outside the scope of the UDRP are matters for the courts. The panel held that the issue was a legitimate trademark dispute, and therefore unfit to be determined in this forum. Dispute resolution under the UDRP “applies only to abusive cybersquatting and nothing else”.
III. The UDRP is not Appropriate to Resolve General Commercial Disputes.
The panels in each respective case, quite correctly, dismissed the complainant’s motions to have the domain name transferred. The UDRP forum is limited to its intended purpose of cybersquatting, and is not the appropriate forum for general commercial disputes. The key point to remember is that the UDRP was created with the objective of providing a quick, cheap and easy means of deciding disputes of domain names involving a trademark holder and bad faith registrants. Accordingly, any issue that falls outside this narrow scope should be dismissed and proceedings moved to a more appropriate forum.
The UDRP is not intended to deal with all domain name disputes, but only particular ones relating to cybersquatting. Legitimate commercial issues, such as complex contractual disputes or trademark disputes, are outside the UDRP’s special class of cases and instead should be brought in a national court under the laws of that country. Whilst this may lead to an additional range of issues for the parties o deal with, the UDRP is ill suited for cases where, to solve the dispute, the tribunal needs to engage in procedures such as discovery, due process, and the cross-examination of witnesses, none of which are available under the UDRP.
In any event, if UDRP panels got involved in these more complicated cases, it would detract from the UDRP’s purpose of being a streamlined and inexpensive alternative dispute resolution forum for relatively simple cases involving bad-faith registration of domain names. General commercial disputes, such as the two cases outlined above, demonstrate that matters outside the narrow scope of cybersquatting will require the complainant to go off and seek redress in a competent court.
[1] The editor of Domain Times was a panellists on this case.
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