Knowing When to Say No

Steve Levy ⬥ 13 October

On certain occasions here at FairWinds, one of the best things we can do for our clients is tell them no. I’m specifically referring to recovering domain names via UDRP. Not every domain name is a good candidate for a UDRP complaint, because while the UDRP is a great system, it does have a limited scope. And sometimes, we need to find different ways to recover key domain names for our clients.

This week, the National Arbitration Forum (NAF) Panel reached a decision over the domain names, and, in which Google was the Complainant. Both Google and the Respondent prepared excellent arguments and exhibits – so much so that in the written decision, the Panelists actually complimented both parties, saying, “The evidence and arguments relied on by the Parties, relating to the Policy, are extensive and ably done.”

So why wasn’t Google successful? Because before the Complaint was filed, Google and the Respondent has entered into a business agreement. This means that the dispute over, and was actually a business or a contractual dispute, not just a dispute over the rights to a domain name. The Panel determined that it was not within its purview to interpret that agreement. These kinds of issues fall outside of the scope of the UDRP.

We’ve seen this before, where Complainants file a UDRP complaint when they should really be filing a commercial lawsuit, a claim under the ACPA, or another type of legal action. In other cases, even legal action is not an ideal choice. The key to a successful domain name recovery strategy is knowing all of the options available, and picking the most appropriate course of action for each unique case. 

Tags: ACPA, clients, commercial lawsuit, contractual dispute, domain names, enforcement, FairWinds, Google, legal action, NAF, National Arbitration Forum, UDRP

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