Wednesday, May 15, 2013

When is a Domain Name Dispute Outside the Scope of the UDRP?

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 malcolmmclaren.com, 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.

3 comments:

Konstantinos Zournas said...

This is outside the scope of the UDRP:
http://domain-name-lawyer.blogspot.com/2013/05/there-is-law-and-then-there-is-justice.html

Zak Muscovitch said...

Interesting way of putting it, Konstantinos. Feel free to elaborate.

Anonymous said...

Mr. Zournas appears to be a bit of an enigma.
Seems to be another in a long line of self proclaimed domain name specialists.
Yes he mounted a successfull defence in the Udrp recently but that case was a slam dunk. More curious to me are the Udrp cases he has lost...not as a representative for some third party but as the registrant of the domain names being challenged.
Along with his recent win I note his involvement In cases involving
Ashley furniture....Ashley.biz....domain transferred
Prudential insurance....pru.us....transferred
Christian Dior.....chloedior.com....transferred
University of Texas....universityortexas.net....transferred
Microsoft.....microsoftword.org, microsoftexcel.org plus 4 others all transferred
And other famous people and brands
So the question is
Is Konstantinos a defender of justice or a cyber squatter?
As someone who is apparently well versed in the law its hard to balance his desire to defend third parties in front of panels with his proclivity for registering names that correspond tomwell known marks and using them in such a way so as to infringe on the rights of their owners. mr. zournas appears to be little more than a wolf in sheeps clothing