By Steve Levy
Not all domain name disputes are suited for resolution through the UDRP. In a July 24, 2024 comment, it was highlighted that other business disputes (contracts, proof of common law trademark rights, prior business relationships, etc.) can place a dispute outside the scope of the UDRP and better suited for resolution through the courts.
In addition to the issues mentioned in that prior comment, questions of trademark infringement can also lead a panel to dismiss a UDRP complaint as being beyond the scope of the policy. My recent decision involving the domain name teslaunch.com is an example of this. The TESLA brand is quite famous around the world for electric vehicles. It claimed that the domain name was confusingly similar to its mark and, as a portmanteau of the name “Tesla” and the word “launch”, I agreed. However, the Complainant also claimed that the Respondent was passing itself off as the Tesla company by selling products under the Teslaunch name.
But, rather than pursuing a scam or some other classic cybersquatting scheme, the Respondent was operating a real business that was actually selling third party parts and accessories which are intended for use with Tesla vehicles. It may be that Tesla has a legitimate complaint about the use of the term Teslaunch within the domain name and on the website, but it cannot be said that this is an “obvious case of cybersquatting”. Rather, there are issues of nominative fair use and trademark infringement that arise which the UDRP is not intended for nor well-equipped to deal with. Such matter are better resolved by the courts which have a broader range of evidentiary tools such as discovery, witness cross-examination, and live hearings. That is why my decision mentions that “the current facts and evidence present a case that is beyond the scope of the Policy as it involves questions of whether the disputed domain name infringes Complainant’s trademark”, and I ultimately held that “should Complainant feel that Respondent is perpetrating an infringement of its rights in the TESLA trademark, a court of law would be the proper venue for addressing such dispute”.
Finally, the Complaint claims that the Respondent violated its obligations under Policy ¶ 2. Just a word of advice, don’t ever mention Policy ¶ 2 in a UDRP complaint. This is a rookie mistake that makes a complainant – or its lawyer – look like they haven’t done their homework. In this decision I noted that “[t]his section of the UDRP is a contractual obligation between the registrant and its registrar to which a complainant does not have privity and thus lacks grounds to assert a cause of action based thereon. Any line of argument based on this section of the Policy has long been rejected by UDRP Panels. Had the Complainant’s counsel looked at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0“), at par. 3.2.1, they would have learned this and saved themselves the time of pressing a long-discarded argument.
So, when considering a UDRP complaint, ask yourself whether the case is really one of cybersquatting or if it’s really a case of trademark infringement that is outside the scope of the Policy. Making the right call here can save time, money, and the potential challenge of having to explain to a judge why you lost a previous dispute against a Respondent’s domain name.