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Contract Complaints Outside Scope of UDRP

The UDRP is a niche regime for arbitrating claims of abusive registration of domain names. It is not a stand-in for a court of law. The Complainant’s theory in IM Global LLC v. Intermedia Film Equities, Sterling Davis, D2009-1690 (WIPO January 24, 2010) was that the Panel could order transfer of the disputed domain name, <imglobalfilm.com> “on the basis of Respondents’ previous [contractual] consent without a review and analysis of the facts support the claim.” In support of this theory the Complainant submitted “a copy of a heavily redacted contract” highlighting one clause that appeared to obligate the Respondent “for no additional consideration” to transfer ownership of the domain name. Much is wrong with this theory of the case regardless of the forum.

Even if the complainant framed its claim under a UDRP theory in IM Global it failed to provide evidence sufficient to establish any trademark credential. It neither alleged under which national jurisdiction it claimed common law trademark or submit any “evidence of usage of the trademark or evidence of knowledge of the mark among the relevant public so as to establish secondary meaning … [or] alternatively provide a legal basis for the establishment of common law trademark rights in some jurisdiction.” Failure of jurisdiction proof is as fatal to UDRP claim as it is to a claim in a civil court of law. The Panel in IM Global held that the Complainant had no standing, but nevertheless decided to “briefly address the other elements for the sake of completeness.”

In this case, the Panel rejected the Complainant’s invitation to expand the jurisdiction of the Policy to rule on a contract claim. It wanted “the Panel [to] ignore the requirements of findings under the Policy because a contract entered into prior to the dispute has not been carried out.” However, “Complainant has provided one clause of a heavily redacted contract in the apparent anticipation that the Panel will act as a civil court and enforce that clause as against Respondent. The Panel is not a civil court and, [even] if it was a civil court, it would not enforce a single clause redacted from a contract as presented by Complainant here.” Underlying the invitation is a construction of the Policy that would find bad faith registration based on the “totality of circumstances,” a perfectly good basis but not applicable to claims outside the scope of the Policy. As the Panel (ironically noted) “the Complainant has not persuaded the Panel to accept a new category of bad faith acts comprised of disappointing a contract buyer of a domain name registered in good faith, and passively holding while at the same time actively using a disputed domain name.”

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