Dive, Dive, Dive!

Steve Levy ⬥ August 12

A recent UDRP case handled by the National Arbitration Forum (NAF) should serve as a lesson to other potential complainants that the UDRP is not the place to air one’s dirty corporate laundry. The complaint, which was filed by MSubs Limited against Marlin Submarines/Paul Moorhouse over the domain names marlinsubs.com and msubsltd.com, was ultimately denied, but featured heated arguments and serious accusations from both sides.

MSubs (Complainant) operates a business in the manufacturing and sale of specialized submersible vessels. In its filing, the Complainant states that:

  • It was given the rights to the MSUBS and MARLIN SUBMARINES marks in the UK and the US by the Respondent after incorporation.
  • The Respondent was a former director for the Complainant, responsible for all intellectual property for the company.
  • The Respondent registered the domain names on November 1, 2012 but was removed from his position on November 30, 2012.
  • The Respondent then went on to create a competing business, making use of the domain names and copying text from the Complainant’s websites.
  • The Respondent is trying to pass itself off as the Complainant, after leaving the company on bad terms.

In response, Marlin Submarines/Paul Moorhouse (Repondent) stated that:

  • The Complainant has no rights to the use of the MSUBS and MARLIN SUBMARINES marks, which still belong to him.
  • He has run a business using the MARLIN SUBS mark since 1979 and has designed submarines since 1983.
  • He has the right to carry on as a submarine builder just as he had done for decades prior to the Complainant’s creation.
  • The Complainant is owned by Submergence Group LLC and operates using that name, not by either of the aforementioned marks.

In its decision, the NAF Panel had to consider the preliminary issue of whether this was a business dispute beyond the scope of the UDRP. It ultimately came to the conclusion that, given the fact that the UDRP arguments play a secondary role to the main ongoing business issue, the case falls outside the scope of the UDRP. The purpose of the UDRP is to combat abusive domain name registrations – it is not meant to be used to resolve complex trademark disputes or questions of contractual interpretation or corporate ownership.

As a result, the Panel had no choice but to deny the complaint and to order that the domain names remain with the Respondent. Given the nature of business, it’s not uncommon to see relationships sour, for allegations to be made, and for things to get messy.  However, this case should serve as a reminder that the UDRP is not the place to try to resolve such issues.

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