The Panel in Family Watchdog LLC v. Lester Schweiss, D2008-0183 (WIPO April 23, 2008) (Complaint dismissed) found that although the Complainant had received a certificate of registration for its trademark, the registration was currently being contested before the TTAB in a cancellation proceeding. That and other issues raised in the response, made the disputed domain name "ancillary to the trademark, unfair competition and other trade related disputes between the Parties" and, therefore, outside the scope of the Policy. It may very well be that the Panel in Family Watchdog "punted" rather than exercised "admirable restraint" (in the words of Ron Coleman
commenting on a posting by William J. Morris in .
Whether panelists get the scope of the UDRP right - what is within and what is not - is a tricky question and open to second guessing. Although not expressly referring to Rule 18(b) of the Policy in the Family Watchdog decision - the Panel's discretion to suspend or terminate the administrative proceedings - the situation is similar to a pending lawsuit and, in such circumstances, a UDRP complaint is appropriately dismissed. It will be interesting to read the outcome of the Family Watchdog contest because, if the complainant, respondent before the TTAB prevails, he may want to try again with a UDRP complaint. Refiling a complaint has been upheld as a proper exercise of discretion and will be dealt with in a future comment.
However, the issue of punting versus admirable restraint is actually an important subject. There has been a tension among ICANN panelists from the inception of the regime in interpreting the principles and rules of the UDRP as they apply to subject matter jurisdiction. In the very early days, there were dissents in three-member panels that became quite agitated about the limitations of the Policy. The dissenting panelist in Ha'aretz Daily Newspaper Ltd. V. United Websites, Ltd., D2002-0272 (WIPO August 21, 2002), for example, stated that the majority has "decided to treat the UDRP as a kind of eminent domain which gives important trademark holders the right to take others' property regardless of whether registrants have actually contravened the Policy."
On the other hand, where the parties "have submitted materials sufficient for [the Panel] to form a clear opinion of what transpired between [them] and how the UDRP could in fact decide where to place the disputed domain names" there is no reason to dismiss the complaint, Bell Helmets, Inc. v. 4X Development, FA0602000651064 (Nat. Arb. Forum April 11, 2006) (Respondent appeared and prevailed).
Loosely, panelists can be described as being in one of two camps: strict constructionists or pragmatists. The strict constructionists have always been wary of enlarging the jurisprudence. If the factual circumstances reveal that there is more to the case than declaring rights in the domain name, the complaint should be dismissed. This is less of a problem when the parties reside in the same jurisdiction, but costly and perhaps prohibitively so if they do not.
Pragmatists are of the view that "some disputes routinely and oftentimes of necessity require ICANN panels to consider broad ancillary legal principles and issues that lie outside the sharp confines of the Policy," Rudy Rojas v. Gary Davis, D2004-1081 (WIPO April 18, 2005) (). Although in this particular case the Panel found that both "parties are using [the] Policy proceeding to gain a tactical or psychological advantage in a broader business dispute between them" and concluded that the case lay "outside the Panel's core jurisdiction."
Willingness to "consider broad ancillary legal principles and issues" is illustrated in a number of cases, many of them involving employees, agents and designers. For example, in Map Supply, Inc. v. On-line Colour Graphics, FA 96332 (Nat. Arb. Forum February 6, 2001) the Respondent argued that as a web designer it had a legitimate interest in the domain name as security for its unpaid services. The Panel concluded that it could review the record and decide the case involving a contractual component notwithstanding the jurisdictional problem. It did not fall outside the scope of the Policy for the reason that "to re-register a domain name without any authority from the [Complainant] in order to gain a bargaining position over [it] - with whom it had no legitimate dispute - is unconscionable." It is as much an abusive registration as an abuse of the system.
Some Panels have determined that under the appropriate circumstances they can even question the legitimacy of the trademark. There are a number of cases in this category. For example, BECA Inc. v. CanAm Health Source, Inc., D2004-0298 (WIPO July 23, 2004): "The mere fact that a trademark has been applied for or obtained by a respondent is not an absolute bar to a complainant succeeding under the UDRP." In a more recent case, Bjorn Kassoe Andersen v. Direction International, D2007-0605 (WIPO June 27, 2007), the Complainant alleged without opposition that the Respondent had unlawfully hijacked the domain name through deception and thievery. The Panel granted the complaint and ordered the domain name transferred.
The core difference among panelists lies in their construction of the jurisdictional mandate. A favorable determination depends upon whether the registrant is chargeable under a more elastic definition of "abusive registration," that is, a definition that includes the concept of abusive conduct or practices generally. Examples include: 163972 Canada, Inc. v. Ursino, AF-0211 (e-Resolution July 3, 2000): the Respondent's intimate knowledge of the complainant's business and use of its mark to preempt the Complainant was bad faith; Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO December 19, 2000): the Respondent cannot find safe harbor for "unlawful activities"; Ward Burton v. Athlete Direct, FA 100652 (Nat. Arb. Forum December 7, 2001) (broken business relationship between complainant and respondent) (Respondent defaulted; Transfer granted).