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UDRP’s Flexibility of Scope

Further on the subject of scope discussed in Yesterday’s Note. The UDRP appears clear in its scope, that it is intended “only for the relatively narrow class of cases of ‘abusive registrations’,” ICANN Second Staff Report, Paragraph 4.1(c), dated October 24, 1999, but in practice its boundary is less than sharp in delineating the included from the excluded even while it remains narrow. The principal reason for this is that the term “ abusive registration” (as a substitute for cybersquatting) subsumes more generally abusive conduct so that claims that are factually mixed with breaches of contract and fiduciary duty, tort claims and statutory infringement are not automatically ineligible for adjudication under the UDRP. In Westdev Limited v. Private Data, D2007-1903 (WIPO February 2, 2008), for example, the Panel found that the Respondent had “abusive intent.” The same could be said for the Respondent in Arma Partners LLP v. Me, Victor Basta, D2009-0894 (WIPO August 26, 2009) referred to in yesterday’s Note.

In early decisions, dissenting panelists in three-member Panels reacted with agitation when (as they perceived it) they saw colleagues improperly enlarging the scope of the Policy. For example, the dissenting panelist in one case 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,” Ha’aretz Daily Newspaper Ltd. V. United Websites, Ltd, D2002-0272 (WIPO August 21, 2002). This admonition is certainly applicable to Monsterops, LLC v. Testosterone LLIC, FA1007001333475 (Nat Arb. Forum September 8, 2010) discussed in the September 20 Note.

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). One consequence of a maturing jurisprudence is a greater flexibility in deciding cases on their merits. Thus,“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) (<nativestyles.net>). Although in this 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 for that reason 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. It fell within 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.”

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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