By Zak Muscovitch.

Not all domain name disputes are covered by the UDRP. In fact, the UDRP is only intended to cover a certain kind of domain name dispute.

Back on October 24, 1999, ICANN’s Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, clearly stated what the intended scope of the UDRP was to be. 

The UDRP was to be for the:

"administrative resolution for only a small, special class of disputes. Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide."

Accordingly, the UDRP is only supposed to be used for true "cybersquatting" cases. Other kinds of domain names disputes, such as genuine disputes involving allegations of trademark infringement, contractual disputes, and business disputes, for example, are supposed to be brought to courts instead of to an ICANN dispute resolution provider.

In the recent case of Estate of Malcolm McLaren v. Paul Norstrum August, over the domain name, the UDRP Panelist, Bruce E. Myerson, correctly decided that the dispute was not within the proper scope of the UDRP. The case involved the estate of the late English fashion and music impresario, against a former associate of Mr. McLaren. The Panelist stated as follows:

"Based upon the allegations of the parties, the Panel finds that this is a business and/or contractual dispute between the Complainant and Respondent that falls outside the scope of the UDRP.  
For the foregoing reasons, the Panel concludes that the instant dispute falls outside the scope of the UDRP." 

Not only did the Panelist correctly uphold the proper scope of the UDRP in terms of it not being intended to resolve genuine business disputes, but the Panelist also made important references to another aspect of domain name disputes that may cause a particular dispute to fall outside of the Policy, even where subject-matter wise, it ought to be within the scope of the Policy:

"Moreover, this case , is like the situation in [Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007)] in that:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible.  National courts are better equipped to take evidence and to evaluate its credibility."

Accordingly, as the Panel pointed out, even where a particular domain name dispute may be a true "cybersquatting" case that should normally be adjudicated under the UDRP, because there are no cross-examinations, discoveries, and live trials in a UDRP proceeding, a Panelist ought to dismiss a complaint where it is not appropriate to make important factual determinations without such a full hearing that can only be provided by a court.

One of the most serious mistakes that I see intellectual property counsel make, is trying to fit a legitimate dispute into a UDRP rather than take the proper course of action and proceed with a regular court case.

By Zak Muscovitch

It took a law professor to met out some rough justice in a recent domain name dispute. In the case of Global Village Publishing, Inc. v. chenwen, Professor Darryl C. Wilson of Stetson University College of Law in Gulfport, Florida, ordered the three-letter domain name, GVP.COM to the Complainant, even though the Complainant only had a trademark for GVPI.

National Arbitration Forum UDRP Panelist, Professor Darryl C. Wilson

Not only did the Complainant not even have a registered trademark for GVP, the Complainant didn't even make any "specific claims of confusing similarity, other than noting that it previously owned the domain name for its own business". Now, normally it would take a lot more than this meager offering by the Complainant in order for a Panel to transfer a common three-letter acronym in the English language from the Registrant to the Complainant.

But this was not a typical case and the Panelist managed to use the UDRP in order to achieve some justice, rather than narrowly applying the law. As many practicing litigation lawyers will tell you, this is not altogether surprising since judges often (and arguably should) apply the law broadly in cases in order to achieve justice. In such circumstances, the judge will see 'where he or she wants the case to end up', and will then find a way to reach that conclusion through the application of the law, even if the route must take some twists and turns along the way.

The reason that this was not a typical case, was that the Complainant alleged that its account with its domain name registrar had been hacked by the Respondent, who then stole the domain name. The Respondent was accordingly, plainly called a thief by the Complainant, and the Respondent did not even respond to the Complaint. The fact that the Respondent did not even respond probably gave the Panelist reason to believe that this allegation of theft was true, and accordingly, justice would be served by restoring the domain name to its rightful owner, the Complainant.

The UDRP however, was not intended to be used as a broad tool to deal with every kind of domain name dispute. In fact, it was originally conceived as, and intended to be, a very limited tool for a very specific use; it was intended to address only the very clearest cases of what has come to be known as cybersquatting. ICANN's Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, dated October 24, 1999, in fact expressly stated that the UDRP Policy was to be "minimalist in nature":

"Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. The policy relegates all "legitimate" disputes--such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name--to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure."

Accordingly, the theft of domain names, per se, was not intended to be dealt with through the UDRP, since "theft" was not part of the "narrow class" of cases meant to be dealt with. Panels have regularly stated that they are not "competent to rule on the allegations of theft in the framework of [UDRP] proceedings" for this very reason.

Nevertheless, Panels can and do use the UDRP to address Complaints based upon theft. It is possible, sometimes with some minor intellectual gymnastics, to frame the unlawful registration of a domain name acquired through theft, in terms of the required prerequisite elements of the UDRP, namely; a) the domain name corresponds to the Complainant's trademark; b) the registrant has no legitimate interest in the domain name; and c) the domain name was registered and used in bad faith. This is precisely what the Panelist in this case was able to do.

In a hotly contested domain name dispute where the Respondent actually responds, the fact that a Complainant's trademark is only GVPI and the domain name is GVP.COM, may be more than enough to find that the Complainant does not even have sufficient trademark rights to win a UDRP dispute. But where a Respondent does not even respond and a Complainant makes allegations of theft of the domain name, it is possible for a panelist to overlook that distinction, and instead find, as the Panelist did in this case, that the trademark and the domain name were sufficiently confusingly similar, even, remarkably, where the Complainant failed to even make this crucial argument itself.

As can be seen from the above, the Panelist went out of his way to help out this Complainant, and did so apparently, to met out some justice, which was arguably appropriate in the circumstances, rather than parochially follow a very narrow interpretation of the UDRP and case law. And that, is how there can be justice instead of mere law in the UDRP.

Critics of a liberal interpretation and application of the UDRP will justifiably have cause for concern in harnessing the UDRP for a purpose for which it was not intended, but on the other hand, where a Respondent does not respond, and where a Complainant has made out a case based upon credible evidence that can be matched with the three required prongs of the UDRP, an equally persuasive argument may exist that where there is no harm, there is no foul, and justice is the true end of the law, not merely the means.