The line separating issues within from those outside the scope of the Policy is not always clear. Contract disputes relating to parties’ relationships are generally outside the scope, but facts can bring them within. For example, Arma Partners LLP v. Me, Victor Basta, D2009-0894 (WIPO August 26, 2009) involved the rights of a withdrawn partner to maintain ownership of the domain names. He had signed deeds transferring the intellectual property and domain names to the Complainant. Those deeds were made part of the record. “[S]ince by those agreements both the disputed domain names became beneficially owned by the Complainant and since the Complainant also became entitled to the ARMA PARTNERS name and trademark, the Respondent cannot claim rights to or legitimate interests in either of the disputed domain names.” This, despite the fact that the domain names had originally been registered by the Respondent in good faith. “It is … clear from clause 18.9 of the LLP Deed … that on resignation as a Member from the Complainant the Respondent was obligated to transfer all property to the Complainant. The disputed domain names were clearly business assets of the Complainant … and, as such, were the Complainant’s property for the purpose of clause 18.9 of the LLP Deed.”

Contracts are also involved in Mitchell Madison Group v. Jim Quallen, FA1004001317575 (Nat. Arb. Forum May 21, 2010). But, in this case, the Panel dismissed the complaint on the grounds that the claim was outside the scope of the Policy. The parties had previously entered into an arbitration settlement agreement in connection with an employment dispute that provided that “any and all claims that were available at the time of arbitration would later be barred from legal proceedings.” The proof supported the Respondent’s contention that the Complainant had known about the disputed domain name prior to the settlement agreement and chose not to deal with it in the arbitration.

The Panel’s decision in Mitchell Madison cites Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007) rests on the proposition that cases that “hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty” are outside the scope of the Policy. This generalization does not fit all sizes, however. It is not that the parties in Mitchell Madison “differ[ed] markedly with respect to the basic facts … [or that] there is no clear and conclusive written evidence.” The facts were clarion, but the Complainant offered no evidence and had no explanation to rebut the arbitration settlement agreement.

In contrast to Arma Partners that established the Complainant’s beneficial ownership of the disputed domain names, the parties in Mitchell Madison had expressly ruled out further legal proceedings. In essence, the Complainant’s claim was barred by the doctrine of collateral estoppel. The Complainant had the opportunity to deal with the domain name issue and elected not to pursue it. The UDRP cannot be used to circumvent the parties’ agreement in either party’s favor.

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