Claims that raise business or contract issues have a mixed history of adjudication under the UDRP. They are sometimes found to be within and other times outside the scope of the Policy. The decision can go either way. Sometimes the decision to dismiss a complaint for lack of jurisdiction rather than grant or deny it appears to be too arbitrary; or, too lazy. H-D Michigan, LLC v. Jim Harley, FA1004001318741 (Nat. Arb. Forum May 25, 2010) and Larry Moss v. EdgemarCenter fortheArts d/b/a Larry moss studios c/o Lora Guarnieri, FA1004001320711 (Nat. Arb. Forum July 1, 2010). The mantra is that cases that “appear[] to 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 UDRP.

In H-D Michigan the Complainant offered into evidence an agreement under which the Respondent promised “That my company shall forthwith take all such steps as lie within its power to change or facilitate change of its corporate name to ‘J. Harley’s Rider Training Limited’…[I hereby undertake] not in any event use the word ‘Harley’ in relation to motorcycle training services or any other goods or services relating to the motorcycle industry or motorcycling without prefixing the word ‘Harley’ with the letter ‘J’, the word ‘Jim’ or the word ‘James.’” In his defense, the Respondent “claims [that] the agreement applies only to his company and not to him individually.” The text of the agreement and surrounding circumstances (such as whether or not there was any consideration) are not disclosed in the decision. However, based on the letter an argument can be made that the complaint should rather have been granted for <harleysridertraining.com> and <harleysridertraining.net> than dismissed. Had there been no agreement and a decision based on the Respondent’s surname the result might very well have favored the Respondent.

In Larry Moss, there is clear evidence of acquiescence in the registration and use of the disputed domain name. Concededly, the Complainant may have remedies in a court of law relating to the dissolution of the parties’ partnership which may affect the rights to the domain name, but on record there is no evidence of bad faith registration or use. An argument can be made that the complaint should rather have been denied than dismissed.

One consequence of a maturing jurisprudence is a greater flexibility in deciding cases on their merits. “[S]ome 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,” Bell Helmets, Inc. v. 4X Development, FA0602000651064 (Nat. Arb. Forum April 11, 2006) (Respondent appeared and prevailed). Where some panelists find cases ineligible for UDRP adjudication, others look further to establish and balance the parties’ rights. San Giorgio Coffee, Inc. v. Marc DeCaria, D2010-0567 (WIPO June 10, 2010). The Complainant stated that he formerly employed Respondent. The Respondent “assert[ed] that he had been operating the company website as a separate business from Complainant’s company and that in December 2006, he and Complainant decided to separate the two businesses, with Respondent retaining the e-commerce website and receiving severance payments and Complainant retaining the local business within the state of Florida.” The evidence that persuaded the Panel to deny (not dismiss) the complaint were two letters the Respondent received from Complainant in 2006 and 2007 in “neither of which [did the Complainant] raise any issue concerning the website.” The failure to come forward with evidence of one’s own or to explain evidence offered by the adversary supports a negative inference in favor of the respondent that the complainant has nothing to complain about. On this subject, see Charter Communications, Inc. v. CK Ventures Inc./Charterbusiness.com, D2010-0228 (WIPO June 25, 2010), separate opinion.

Indeed, the record is clean of any objection by Complainant to Respondent’s use of the domain name until March 2010. The statement of Complainant’s president that Complainant never authorized or acquiesced to Respondent’s use of the domain name for his own benefit is, in the absence of other details or supporting evidence, self serving and unpersuasive.

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