UDRP Panel Denied Complaint on Grief.net Citing Pending Litigation
A three member panel UDRP panel denied the UDRP by The Grief Recovery Institute, LLC and The Grief Recovery Institute Educational Foundation, Inc. (“Complainant”), and Grief Recovery Institute on the domain names grief.net and grief-recovery.com
This panel citing pending litigation punted on the decision but pointed out that different UDRP panels have decided the issue differently.
I do think that is the proper decision and wish it was a universally accepted rule amongst UDRP panelists.
Here are the relevant facts and finding from the three member panel
Complainant is the owner of the GRIEF RECOVERY mark, as well as the GRIEF RECOVERY INSTITUTE mark and other GRIEF RECOVERY related marks.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GRIEF RECOVERY & Design mark (Reg. No. 2,019,818 filed February 23, 1995, registered November 26, 1996).
Respondent registered the grief.net domain name on April 21, 1998, and the <grief-recovery.com> domain name on August 31, 1996.
Respondent was an erstwhile licensee of Complainant’s business who failed to comply with the terms outlined in the licensing agreement, and eventually began operating his own competing business, using the disputed domain names to promote his seminars.
Respondent contends that the issues in the current dispute are beyond the scope of the UDRP and requests the Panel terminate the current UDRP proceeding.
Respondent claims that currently a dispute exists with the Federal Court in Canada based on the rightful ownership of the disputed domain names, and terminating the present UDRP proceeding in favor of determining the Canadian action is the most efficient manner of determining a just outcome.
Alternatively, Respondent denies that the <grief.net> and <grief-recovery.com> domain names are confusingly similar to Complainant’s GRIEF RECOVERY mark.
Complainant has no basis upon which to claim rights in the word “grief” alone, and Complainant did not disclaim the single word “grief” in its registered trademark.
Respondent has rights and legitimate interests in the <grief.net> and <grief-recovery.com> domain names, as he promotes his business in Canada using the domain names.
The domain names were at no time registered on behalf of Complainant.
“”Complainant argues that Respondent entered into a license agreement with Complainant’s predecessor in 1991 to hold authorized licensed seminars in Canada on behalf of Complainant. The agreement included the right to use the GRIEF RECOVERY trademarks in connection with the seminars and that misappropriation of Complainant’s marks would result in Respondent’s liability. “”
“”Complainant directed Respondent to register the disputed domain names in 1996 listing Complainant as the account holder. “”
“”Respondent registered the disputed domain names instead under his own name and has made no contributions to the registration or renewal costs of the disputed domain name aside from time contributions toward managing the resolving websites on behalf of Complainant, for which Complainant compensated Respondent. “”
“”In 2010, Complainant shifted its online presence to a primary website at the <griefrecoverymethod.com> domain name, to which the disputed domain names were to be automatically directed. Respondent had at that time not paid Complainant any royalties and has failed to develop a new primary website for Complainant’s Canadian division, and instead attempted to maintain the old websites and deploy “LoadDNS” software on the <grief.net> and <grief-recovery.com> domain names. Complainant learned in 2011 that the disputed domain names were not redirecting to the new primary website as they should have, due to the LoadDNS software, and made Respondent aware of that fact in an attempt to gain his compliance. Respondent removed the LoadDNS software and took adverse control of the <grief.net> and <grief-recovery.com> domain names by changing the password to the account associated with the domain names, terminating the licensing agreement it had with Complainant, thereby revoking his authorization to use the GRIEF RECOVERY marks and his ability to manage the websites associated with the <grief.net> and <grief-recovery.com> domain names.”"
“Respondent began using the websites instead to misrepresent his role in Complainant’s company and compete with Complainant by holding seminars in Canada”.
“”When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.”
The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
“[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.”
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. ”
“On the basis of this finding, the Panel concludes that the complaint is due to be dismissed.“
“”In situations where concurrent court proceedings are pending, as is the situation with respect to the instant Complaint, some panels have chosen to proceed with the UDRP filing”.
“Alternatively, other panels have chosen not to proceed with the UDRP because of the pending litigation”.
“It is the decision of this panel not to proceed with the UDRP because of the pending litigation and that the complaint is due to be dismissed”.
“On the basis of the reasoning outlined above, the Panel finds that this matter is outside the scope of the UDRP and decides that this case is due to be dismissed”.