The famous Kenny Rogers song “The Gambler” teaches us that “you got to know when to hold ‘em, know when to fold ‘em” but it says nothing about the importance of picking the right casino. In the wild and freewheeling world of domain name disputes similar rules apply but those who are savvy enough to survive a long time in this game have learned that some cases just can’t be won in front of a UDRP Panelist.
When Do You Use the UDRP?
The UDRP was created as a fast-track and lower cost alternative to court litigation and, as a result, many of the procedures taken for granted by litigators, such as discovery and witness cross-examination, are not available. This has lead to a long line of case precedent which explains that the Policy is only for clear cases of cybersquatting and is not suited for more complex disputes.
A Cybersquatting Question Better Suited for Court
In a recent case involving a licensee of the Russian VULKAN trademark as used for gaming and entertainment the Complainant wasn’t very happy when the Respondent registered the domains bestvulkan.com and myvulkan.com and used them for a website offering online casino and gaming services. In its defense, the Respondent claimed that any trademark rights which may have existed in the VULKAN name had been abandoned since the Russian Federation banned gambling in 2006. It also claimed that the license, under which the Complainant claimed rights to the mark, was non-exclusive and did not grant the Complainant any right to pursue infringements of the brand.
In what can only be attributed to the saint-like patience and tolerance by the Panel, no less than three supplemental filings were submitted by the Complainant seeking, not only to address the Respondent’s defenses, but also to fix some of the omissions it had made in its complaint and the earlier supplemental filings. (This is off-topic for this post but many other Panels might not have been so forgiving and wouldn’t even consider anything beyond the first supplemental document.) In these submissions, the Complainant put forth a copy of the license and argued that the validity of its trademark rights is beyond the scope of the UDPR and so should not be considered by the Panel.
Finally, the Respondent had cited a prior UDRP decision that was unfavorable to the Complainant whose facts and arguments were very similar to the present case. The Complainant shot back that this Panel is required to assess the present case independently of any prior decisions because it involves a different respondent and registrar. The Panel agreed with the Complainant on this point but that was the last good hand that was dealt to it.
The Panel mentioned that the Complainant itself points out that issues of trademark validity are generally outside the purview of UDRP proceedings. And much of the substance of the dispute between the parties turns on issues of trademark ownership, validity, and licensing. These are complex issues best addressed through the court system and, since the facts of this dispute do not establish a clear-cut case of cybersquatting, the Panel denied the Complaint. In addressing the intended scope of the UDRP, the Panel stated that “The Policy does not contemplate this Panel serving as a tribunal of general jurisdiction over any and all disputes which are somehow related to domain names.” Issues such as trademark validity, abandonment, acquiescence, and unclean hands simply should not be decided through a process that is a curtailed version of litigation which offers no ability to more deeply delve into the facts and law surrounding such a multi-faceted dispute.
To Be Continued?
At this point the Complainant may still pursue its claim but it will obviously be more costly and time-consuming. This very factor will test how important these domains are to it and whether it is prepared to “see” the Respondent’s UDRP ante and “raise” it with a trip to the courthouse.
- How Fast Flux DNS is Hurting Brands and How It Could Affect UDRP - October 19, 2017
- Is Nominative Fair Use of Domain Names OK For a Business That Is Related to a Brand? - May 15, 2017
- How Did 2016 Domain Name Squatting Disputes Expand UDRP Thinking? - February 23, 2017