UDRP complaints are mostly against strangers accused of appropriating for commercial gain disputed domain names which they registered after the complainant’s accrued rights in the trademark. However, complaints have also been filed against former business Associates in which are raised legal issues on the cusp of the Policy’s scope. The easy decision is to dismiss such complaints as being outside the Policy’s scope. Early cases, in fact, attempted to draw the line on what constituted cybersquatting, The Thread.com, LLC v. Jeffrey S. Poploff, D2000-1470 (WIPO January 5, 2001), and later cases have made short shrift in dismissing complaints as outside the scope that crossed the line to contract and fiduciary breaches, Fuze Beverage, LLC v. CGEYE, Inc. c/o Thomas Siedleczka, FA0611000844252 (Nat. Arb. Forum January 2, 2007).

In business associate cases, the disputed domain names are generally registered contemporaneous with the formulation or initial discussions for the business and generally in the name of one of the partners. Two recent decisions continue to explore this territory before concluding either that there is an absence of proof that the domain name was registered in bad faith, Center for the Study of Psychiatry, Inc. d/b/a International Center for the Study of Psychiatry and Psychology, Inc. v. Peter Breggin, FA1007001334307 (Nat. Arb. Forum September 2, 2010), or the facts are beyond the scope of the Policy, Allcaneat Foods, Ltd. v. Karma Ventures LLC and Dave’s Domain’s, FA1007001335801 (Nat. Arb. Forum September 8, 2010).

Cases on the cusp, however, have to be examined carefully. The reasoning has not remained static. The Panel in The Thread.com, for example, held that the UDRP was not the proper forum because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy.” He continued, “[t]he only arguable reason that Complainant is seeking relief in this forum is that the property at issue is a domain name.” Nevertheless, he also made it clear in dicta – uttering a moral rather than a legal judgment – that “it strains credibility for Respondent to argue that he is holding the Domain Name for any purpose other than as ‘leverage’ in his negotiations with Complainant.”

However, the Panel in Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., D2003-0185 (WIPO May 22, 2002) (that included as the presiding panelist the same panelist who decided The Thread) went a step further. It noted that “[j]ust as cybersquatting can occur between strangers, so can it occur between business partners.” In Bootie, the identical or confusingly similar domain names were ordered transferred to the Complainant. The Respondent in its registration application identified the Complainant as registrant; herself as contact.

In Arma Partners LLP v. Me, Victor Basta, D2009-0894 (WIPO August 26, 2009) a former partner refused to relinquish the domain names even though he had deeded them to the partnership at its formation. The Panel looked past the contract issue; the Respondent had no right or legitimate interest in the domain name and its continued retention of it constituted an abusive registration. The “Respondent as a Member of the Complainant agreed to devolution of that ownership to the Complainant.” This was tantamount to admitting that in registering the domain name the Respondent was acting on behalf of the Complainant as a constructive trustee. Respondents in Center for the Study of Psychiatry and Allcaneat successfully rebutted allegations of bad faith.

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