Disputes declared outside the scope of the UDRP affirms the Policy’s limited jurisdiction. The Policy is designed to address claims of cyber infringement of an owner’s trademark, not to determine trademark infringement or claims of business disputes. To be sure the demarcation between disputes within and other outside the scope of the Policy can be penumbral. It took a first year or two of cases to establish that breach of fiduciary duty by an employee should be within the scope. It is not the theory that supports an actionable claim but respondent’s conduct that is the proper focus for analysis: what the employee did, his or her status, and when and for what purpose while he or she was employed by complainant are the important factors.
A more difficult issue is parsing a dispute between contractually related parties or business partners. If the claim is limited to the domain name it is likely to be within the scope; but if the domain name is incidental to other claims or is so tangled with it the dispute is likely to be outside the scope of the Policy. The Panel in Insolvency Services Group, Inc., As Assignee for the Benefit of Creditors of BIDZ.COM, INC. v. Leon Kuperman / LGK Consulting, FA1409001580768 (Nat. Arb. Forum November 13, 2014) (<bids.com>) notes that the Policy’s purpose is to “combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .…” He posed the question in this way: “Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP.” The dispute is over <bidz.com>. Facts and proof make a case. Allegations alone are not probative of the ultimate question. This is essentially the Panel’s point in noting the evidentiary deficiencies of the Complainant’s submission:
[First] [T]he Panel finds that Complainant’s own statements suggest the existence of a complicated business dispute underlying the ownership of both the BIDZ.COM mark and the <bids.com> domain name.
[Second] The Panel notes that Complainant did not even provide the Assignment document upon which it rests its rights in the BIDZ.COM mark until its Additional Submission. That Assignment document is not straightforward, particularly regarding the <bids.com> domain name, allegedly part of the assets of BIDZ.COM, INC.
[Third] Complainant presents a convoluted history regarding who is listed as the registrant of the disputed domain name, and a complicated history of the winding down of BIDZ.COM, INC.
[Fourth] Both the listed registrant of the disputed domain name and Daniella Zinberg have ties to BIDZ.COM, INC.; Leon Kuperman was the former President of BIDZ.Com, Inc. and Daniella Zinberg is allegedly the daughter of the founder of the company.
[Fifth] Complainant also entertains the argument that it has not abandoned the use of the BIDZ.COM mark.
[Sixth] Thus, many issues have been raised which would require proof more suited to the thorough scrutiny afforded in litigation.
These are not the only issues:
“[t]here are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.”
Moreover, the parties’ submissions make it clear they have a business relationship and the domain name ownership is genuinely in dispute. In its Implementation Report ICANN expressly reserved for a court of law opposing claims to domain names:
Except in cases involving ‘abusive registrations’ made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties)….
The parties are not strangers but neither is the relationship purely employer-employee. The Panel cited Bracemart, LLC v. Drew Lima, FA 1494699 (Mar. 28, 2013) for the proposition that when complainant and respondent act “at some point … in an official capacity in the management of the company” the dispute moves into the realm best resolved by the court.