Disputes Outside the Scope of the Policy

Disputes Outside the Scope of the Policy


The mix of cases always includes the occasional complaint that is unsuited to arbitration under the Policy. While there is some elasticity in the construction of “abusive registration,” business disputes in which the domain name is inseparable from “much larger, complex disputes between the parties, involving alleged breaches of contract, breaches of fiduciary duty, and tortious conduct” are more likely to be outside the scope of the Policy and more appropriate for disposition in a plenary action, Jason Crouch and Virginia McNeill v. Clement Stein, D2005-1201 (WIPO January 31, 2006), citing Clinomics Biosciences, Inc. v. Simplicity Software, Inc., D2001-0823 (WIPO August 28, 2001). In such factual circumstances it would be “inappropriate to use the Policy to attempt to carve out and resolve the relatively minor, but interconnected, domain name dispute,” Id
 
These warnings notwithstanding, complainants continue to test UDRP’s subject matter limitation. No doubt the lure is the relatively modest cost to maintain the proceedings. Three recent cases illustrate factual circumstances in which the domain names are inseparable from the larger, complex disputes between the parties,” Eric Haddad Koenig v. All Ltd, Selena Kovalski, D2008-0322 (WIPO June 17, 2008); Vail Valley Partnership d/b/a Vail Valley Chamber & Tourism Bureau f/k/a Vail Valley Tourism & Convention Bureau v. ecomshare c/o Office Manager, FA0803001163682 (Nat. Arb. Forum May 7, 2008) and Interactive Study Systems Inc. v. BFQ, D2008-0205 (WIPO April 2, 2008). The two latter cases involve parties known to each other and (mis)using the UDRP to settle one part of their dispute. In Eric Haddad Koenig the parties are respectively Mexican and U.S. citizens in which the Complainant alleges that it lost the domain name to a fraudulent scheme. The factual circumstances in all three cases are complex with each party disputing the allegations of the other. The kind of cases, in fact, that raise questions of credibility and plausibility that are better suited to plenary review and not amenable to determination without discovery.
 
The general rule is that “only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure,” ICANN Second Staff Report, Para. 4(c), dated October 25, 1999. All other disputes, “such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name – [are relegated] to the courts.” This limitation is based on the WIPO Final Report, dated April 30, 1999, Paragraphs 135, 153 and 166.   They read as follows:
 
Paragraph 135: “In view of the weight of opinion against mandatory submission to an administrative procedure in respect of any intellectual property dispute arising out of a domain name registration, the final recommendations of the WIPO Process contain two major changes in respect of the suggested administrative dispute‑resolution procedure:
 
(i)   First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.
 


(ii) Secondly, the notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights.”
 
Paragraph 153: “... The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting), as defined below, and would not be available for disputes between parties with competing rights acting in good faith.”
 
 Paragraph 166: “The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations.”
 
The Second Staff Report can be found at http://www.icann.org/udrp/staff‑report‑24Oct99.htm; the WIPO Second Report can be found at http://www.wipo.int/amc/en/processes/process1/report/index.html.
 
The Policy is unsuited to resolving contract, fiduciary, tort and statutory claims. It does not apply and should not be used to “shoehorn what is essentially a business dispute between former partners,” The Thread.com, LLC v. Jeffrey S. Poploff, D2000-1470 (WIPO January 5, 2001), or where the dispute is complex and the facts disputed, Courtney Love v. Brooke Barnett, FA0703000944826 (Nat. Arb. Forum May 14, 2007), in which the majority noted that in complex cases the dispute can be examined more thoroughly by a court than a UDRP panel:
 
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.
 
The issues in Eric Haddad Koenig “range far beyond forgery of the purchase agreement and invoice and banking instruction.” There was also a question as to “the very existence of the principal.” While the domain name is central to the complaint, the Respondent’s contentions (even if far-fetched and fraudulent) are too factually complicated to be resolved on papers. Edward G. Linskey v. Brian Valentine, D2006-0706 (WIPO September 18, 2006).  The parties in Vail Valley Partnership (both Colorado residents) and Interactive Study Systems (Florida and Texas) intersect in their businesses and principally involve contract and fiduciary disputes to which the domain names are “ancillary to and inseparable.” 
 
Cases in which the domain name is not inseparable from other disputes, particularly involving business associates and former employees, are, with some qualifications, more likely to be within the scope of the Policy. Examples of these disputes will be discussed in a later Comment.