Domain Disputes: don’t go there if you’re divorcing

January 27, 2021, By

We have spoken about the Uniform Domain Name Dispute Resolution Policy (UDRP) previously but cutting to the chase: it is a cost effective way to resolve issues relating to the registration of most domain names. When entities purchase domain names, they sign up to be bound by the UDRP in case of any arguments relating to whom the rightful owner is (or is not).

The UDRP does a very good and cost efficient job of resolving such disputes; what it (admittedly) does not do is provide a form to resolve marital disputes which may be better suited to the courts.

In Chancery Track, LLC v. Andrew Paul (Claim Number: FA2101001928125), UDRP proceedings were brought by Chancery Track who claimed that Mr Paul had “hijacked the disputed domain name [chancerytrack.com] and is redirecting it to his own website” (a statement common to many UDRP proceedings) and that Mr Paul was the “soon-to-be ex-husband” of Chancery Track’s principal (a statement not so common to many UDRP proceedings).

Chancery Track submitted that it was the owner of common law rights in the CHANCERY TRACK mark, surprisingly it did not file any evidence to support this claim – in some circumstances a registered trade mark may not be required for the UDRP but if there is no registered trade mark then there should be evidence of any common law or unregistered rights.

Mr Paul countered by explaining he obtained the domain name on 4 January 2016, which was a few days before Chancery Track was incorporated. Mr Paul further submitted that “Complainant closed Chancery Track LLC sometime in October 2020 and formed Chancery Track USA LLC on October 19, 2020 to hide and transfer assets of the company from Respondent.”

The first step in any UDRP proceedings is to determine whether domain name is identical or confusingly similar to a trade mark in which the complainant has rights. Generally evidence of a trade mark registration fulfils this, however, here Chancery Track claimed to own “common law” rights i.e. not a registered trade mark but rather CHANCERY TRACK had become a distinctive identifier of Chancery Track, LLC. The UDRP panel noted that “The formation of a company alone does not qualify has having a trademark or service mark. Low though the threshold for standing may be, it is not so low that a complainant’s assertion that it has “operated its business for years” can be received as evidence of its truth.”

The UDRP panel then went onto note the context of this dispute “it is part of a larger and more divisive dispute that is currently being played out in divorce court in the State of Florida.” Furthermore, that Mr Paul contends Chancery Track, LLC is in fact a marital asset.

Ultimately the UDRP panel considered that the UDRP was not the proper forum for a dispute that raises issues outside of its scope. On the basis that the current UDRP proceedings were part of a wider marital dispute between the parties, the panel refused to transfer the domain name to Chancery Track and instead said that “Who as between the parties will ultimately be found to own the disputed domain name is better determined by the Court in which the divorce proceedings are currently being played out.”

What does this mean: something that we have known for some time, the UDRP is a great policy for limited number of scenarios, namely who should hold ownership of domain names, it doesn’t do too well for evidential disputes which are better suited to court however.

Is the UDRP for you or will it be a nasty split? Why not give us a call or send us an email where one of expert lawyers will be more than happy to assist and provide you with a free consultation.

Written by Sam O’Toole, Solicitor

 

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