The UDRP offers a forum with limited jurisdiction to resolve a particular type of dispute in which a domain name registrant has allegedly misappropriated a trademark for commercial gain at the holder’s expense. The Policy does not presume to adjudicate claims for trademark infringement or business disputes that concern more than the domain name. The forum is neither a substitute for a court of law nor a trademark court. Yet within the scope of the Policy a trademark holder can obtain declaratory and injunctive but not monetary relief against a domain name registrant infringing its rights similar to although not as extensive as that which is available in the U.S. under the Anticybersquatting Consumer Protection Act. It accomplishes this in double time plus and at a fraction of the cost of a federal lawsuit.

In noting the Policy’s limitations it is necessary to add as qualification that “the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark) is a feature of the policy, not a flaw,” ICANN’s Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, October 29, 1999, paragraph 4(c). But, if the UDRP is not a trademark court, What is it? Abusive registration (a term equated with but arguably more extensive than cybersquatting) is a judgment that in registering and using the disputed domain name the respondent violated the Policy. The violation may also be a trademark infringement, but that is not the basis for the Panel cancelling the respondent’s registration or ordering the domain name transferred to the complainant. Trademark infringement is simply one of the factors in considering whether the respondent acted in bad faith.

While what constitutes “a legitimate dispute” is clear on both sides of the divide, the center is murky. Claims found to be outside the scope of the Policy most generally involve disputants in contractual or fiduciary business relationships. Employer/employee disputes have a mixed history (the murky center), sometimes within and other times outside the scope of the Policy [Adya, Inc. v. A Clark / Intensity Webhosting, FA1011001360903 (Nat. Arb. Forum January 10, 2011) (outside); Honeywell International Inc. v. Celeris Controls, FA1010001351938 (Nat. Arb. Forum November 15, 2010)(within the scope)]. The common denominator is that the claim is not, at bottom, actionable for abusive registration. Other recent examples are between partners or former partners, J. Kyle Mathews, M.D., P.A. d/b/a Plano Ob/Gyn Associates v. C. Keith Grisham, FA 1358903 (Nat. Arb. Forum January 10, 2010); purchaser and seller, ESI Canton, LLC v. David Epstein, FA 1356618 (Nat. Arb. Forum December 28, 2010); trademark holder and investor, David and Rainy Robinson v. DRIVERSITY OF ANTIOCH /STEPHANIE ANIU, FA1010001350486 (Nat. Arb. Forum November 24, 2010).

To take one of the cases as illustration. ESI Canton involved contract claims relating “primarily … to the execution of the Bill of Sale. Specifically, the parties dispute whether Complainant adequately performed under the Bill of Sale in rendering payment.” In the Panel’s view “[r]esolution of this dispute likely involves issues pertinent to the common law of contracts in the appropriate jurisdiction and is not appropriately addressed to this forum.” This is not to say that any dispute which calls for contract interpretation is outside the Policy’s scope; that would be too narrow a construction, Honeywell International for example.

In the case of ESI Canton, the Panel’s decision rested on Rule 18(a) which “gives the Panel discretion to terminate a proceeding ‘[i]n the event of any legal proceeding initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint’.” The Respondent had not actually commenced a lawsuit, but represented that “a cause of action for breach of contract appears imminent and the disputed facts are not readily decipherable from the parties’ submissions.”