I recently read through an interesting domain name dispute that highlights some important issues concerning appropriate use of the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) in 1999 as a means of addressing and resolving the problems necessarily caused by the inevitable conflict between trademarks and domain names.
In this case, Andrew Prince filed for UDRP arbitration with the World Intellectual Property Organization (WIPO) over the domain prince.com. The complaint was filed against Sven Echternach. Prince has been the co-owner of the registered UK trademark PRINCE since 1997. He originally registered the domain prince.com in 1995 but contends that it was transferred to Moniker Privacy Services in 2010 without his knowledge or consent. He claimed that he only realized what had happened after he received a letter demanding he pay commission on the sale of the domain, based on an alleged exclusive brokerage agreement between him and Moniker.
In response, Echternach alleged that he purchased the domain by fair and legal means through an escrow service after it had been offered at public auction and failed to sell. He paid $235,000 for the domain. The previous registrar contended that it received an e-mail request from Prince to transfer the domain, which it did after verifying Prince’s password with him in order to ensure that Prince had indeed authorized the sale.
The Panel denied Prince’s complaint on the basis that the case does not fall under the scope of the UDRP. The Policy was designed as a means for trademark owners to recover cybersquatted domains through legal arbitration, in the event that the registration of those domain names infringes on their trademark. Descriptions and explanations of the UDRP are provided on the WIPO website, so it is slightly baffling to come up with an explanation as to why Prince would attempt to use the UDRP in this way.
Prince’s stated reason for filing his complaint was to recover stolen property. Even if his argument was valid, the Panel could not overlook the fact that the Policy was not created as a means of resolving accusations of domain name theft. The Panel found, therefore, that the dispute would be better resolved by other legal means and had no choice but to dismiss Prince’s complaint. It is an interesting look at the purpose of the UDRP and when it is and is not appropriate to use it as a means of acquiring a domain. Had Echternach been using the domain to infringe somehow on Prince’s registered trademark, there might have been the possibility for a legitimate UDRP claim, but that definitely does not seem to have been the case.
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- How Did 2016 Domain Name Squatting Disputes Expand UDRP Thinking? - February 23, 2017