Who's the Boss?

There are those times. There’s a business dispute. There’s a domain name or fifty. And there’s the UDRP. It’s far less costly, as a general rule, to file a UDRP than it is to litigate in court. What to do? When is a dispute actionable under the UDRP and when is it a business dispute? The answer is not always clear.

In Autoboss Tech., Inc. v. Cardiag cardiag / Cardiag Inc., FA 1405219 (Sept. 23, 2011), a manufacturer filed a claim against its former distributor over the registration and use of the <AutoBoss.us> domain name. Confronted with an unclear factual record and conflicting claims, the Panel found that “the Domain Name is only one element of a much broader commercial dispute between the parties that involves Complainant’s termination of Respondent’s distributorship allegedly without notice, the recovery of costs advanced by Respondent to promote the business of Respondent as a distributor of Complainant’s products, and possible improper interruption of business relationships between Respondent and its customers by Complainant.” Quoting a prior decision, the Panel denied the claim:

[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 . . . . The issues between the parties are not limited to the law of trade marks. There 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.

In hindsight, this appears to be a clear case for the courts, however, the facts are not always so clear, and parties sometimes will feign the nature or extent of a commercial or business relationship in order to thwart the UDRP.

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