If you want to win a UDRP proceeding, it helps to actually argue UDRP elements

A NAF single member panel recently denied the UDRP complaint brought over the disputed domain names <insuladd.com> and <insuladdglobal.com>. The Panel noted that the Complainant did not make any legal arguments within the Complaint itself but instead asserted that the Respondent illegally hacked into the Complainant’s network and stole the disputed domain names from the Complainant. Complainant asserted that it was ready and willing to file a claim in federal court if unsuccessful in the UDRP proceeding.

Though the decision does not provide a lot of detail, it was clear there is a long history between the parties. The Complainant submitted as an attachment a draft federal complaint in which it argued various legal points including breach of contract and breach of promissory note.

The Panel simply had no basis on which to grant relief to the Complainant. Though it was able to sift through the filing to find the domain names confusingly similar to the Complainant’s trademark rights, on the rights or legitimate interests and bad faith prongs, the Panel wrote that the “Complainant does not make any legal contentions with respect to [this element of the UDRP].”

The takeaway from this case is for Complainants to not waste their resources filing UDRP cases that do not even make arguments under the UDRP. That will save all parties involved the time needed to toss out a non-case.

Tech Traders LLC / David Page v. Insuladd Environmental Products, NAF Claim Number: FA1707001738720 (August 3, 2017)


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.

Panel denies complaint where dispute between parties was outside scope of UDRP

In the case of BubbleMania and Company LA, LLC ® v. Caroline Dues / BubbleMania and Company Inc, an NAF Panel denied the Complainant’s efforts to have the domain name <bubblemaniaandcompany.com> transferred because the dispute between the parties involved contractual issues outside the scope of the UDRP.

The Complainant is in the business of providing entertainment services, including soap bubble, science themed performances for children. It bought the company from a previous owner, who had apparently hired the Respondent to register what became the disputed domain name. After the transaction, the Respondent refused to turn the disputed domain name over. This UDRP action followed.

The Panel made no findings under any of the three UDRP elements, instead dismissing the complaint on the preliminary issue of whether the dispute was within the scope of the UDRP. The Panel compared this case to an earlier case of Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), in which that panel stated:

A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.

In this case, that Panel found that the dispute contained questions of contractual interpretation, and thus fell outside the scope of the UDRP. Because the Panel found this matter fell outside the scope of the UDRP, it dismissed the complaint.

BubbleMania and Company LA, LLC ® v. Caroline Dues / BubbleMania and Company Inc, NAF Claim Number: FA1603001663923 (April 11, 2016)


Evan_BrownAbout the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, internetcases, for more information about general internet law.