By Steve Levy
A couple of recent UDRP decisions have highlighted the issue of what’s within the scope of, and appropriate for the policy and what disputes are really better suited for resolution in a courtroom setting. A frequent comment is that the UDRP was designed only to handle obvious cases of cybersquatting. It was not intended to address anything beyond this very narrow purpose and has none of the evidentiary tools that courts have, such as discovery and witness cross-examination. So, if employment, contract, or financial disputes exist, panels must carefully examine whether they impact ownership of the domain name before proceeding to analyze the matter under the UDRP. If the additional issue is completely tangential to the domain name (ex. someone owes someone else money) then it may be appropriate to continue with the UDRP case. But if the issue is, for example, a factually complex analysis of the scope of a complainant’s trademark rights, panelists must proceed with caution and decide if a courtroom is the better venue for the matter.
In the decision denying transfer of the domain name alternativepods.com, the parties had already been engaged in litigation in both state and Federal courts over things like which of them was actually the owner of their previous jointly-operated business venture, who actually registered the disputed domain name, and which of them is entitled to the underlying ALTERNATIVE PODS trademark. The 3-member UDRP panel found that “control of the domain name is central to the other remedies sought in the court cases” and that “resolving the domain name issue in this case necessarily involves sorting through the same competing factual allegations that will determine the other issues in those cases.” Since “[t]his case arises out of the dissolution of a previous business relationship … it is outside the scope of the UDRP….” Deferring to the courts on matters that could directly affect ownership of the domain name was a reasonable approach here.
Another decision involving the domain name hedaryslasvegas.com had other non-domain issues. Here, Complainants operated a restaurant called HEDARY’S and their brother operated a different restaurant using the same name. The brother eventually sold the restaurant and stipulated that if the purchaser further sold the restaurant to someone else, the next owner was not allowed to continue using the HEDARY name. The Respondent purchased the restaurant and continued using the HEDARY’S name as well as the disputed domain name. The Complainants’ claimed that this was an infringement of their trademark rights as well as a violation of the brother’s sale agreement. So, before deciding whether to transfer the disputed domain name under the UDRP, it would become necessary to resolve issues of the scope of common law trademark rights, trademark infringement, and contract law. For these reasons, the panel declined to consider this dispute as being beyond the scope of the UDRP and better suited to a court setting.
From these scenarios it becomes clear that one should carefully consider whether a UDRP complaint is the right course where issues other than an abusive domain name – classic cybersquatting – might arise. Where other issues come into the picture, whether involving the Complainant’s trademark rights or past dealings with the Respondent, it may be better to go directly to a court where questions of evidence and testimony, as well as more complex and broader legal claims can be handled.