The WIPO Final Report in anticipation and ICANN Second Staff Report, Paragraph 4(c), dated October 24, 1999 glossing the newly implemented UDRP make it clear that the jurisdiction of the arbitral regime was limited to a “special class of disputes” namely claims of abusive registration of domain names. The “notion of an abusive domain name registration is defined solely by reference to violations of trademark rights” (Final Report at paragraph 135[ii]). This is reiterated in Paragraph 5 of the Policy: “All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.”
Complainants ignore this limitation at their peril. They have to properly frame their complaints by focusing on the elements that have to be proved. Questions of libel are not within a UDRP Panel’s province. To be sidetracked is fatal to a complaint as the Complainant found out in Push Traffic Inc. v. Art Lynch, FA0908001281020 (Nat. Arb. Forum October 14, 2009). The only purpose of Respondent’s website (according to the Complainant) is “to defame, libel, attack and otherwise threaten complainant based on no facts in violation of respondent’s host’s terms of service…which prohibits the use of services ‘to store, post, transmit, display or otherwise make available …defamatory, harassing, abusive or threatening language’.” However, the Respondent made it clear in naming his domain that his purpose in registering <pushtrafficswindle.com> “is to warn the public of the allegedly unethical business practices of Complainant.” Not only that but the “statements on Respondent’s Website that Complainant says are false are in fact true,” which is potent defense to a claim of defamation. It would have been a more interesting case if the addition of “swindle” to a trademark precluded confusing similarity; that is, similar but not confusing.
Pleading defamation indicates a fundamental misunderstanding of the UDRP despite fairly accessible instructions on the WIPO and National Arbitration Forum websites. The first requirement is proof that the complainant has a trademark right, which in Push Traffic the Complainant failed to plead. “With no trademark registration, Complainant can only satisfy Paragraph 4(a)(i) of the Policy by establishing that Complainant’s Domain is a common law trademark. The Complaint is seriously lacking in this regard. First of all, Complainant has not even asserted that Complainant’s Domain is a common law trademark.” (Emphasis added). Case closed.
In Push Traffic, the Panel added an instructional coda on subject matter jurisdiction. Complainants and respondents (he said) “should direct their substantive arguments and evidence exclusively to [the elements necessarily to be proved]…. Submissions and evidence that are not directly relevant to Paragraph 4 of the Policy are not relevant.” The consequence of ignoring the rules is illustrated in Push Traffic. Because the “Complainant has focused its efforts on the issues of defamation and libel and ignored the requirements of the Policy. … [it] has rendered its own case unwinnable.”