Domain Name Disputes: Arbitration or Litigation?

This article was originally published on 19 June 2021 at domaintimes.info under the title ‘A UDRP Panel or Court Proceedings?’

The case of dmarcian, Inc. v. Martijn Groeneweg / dmarcian Europe BV (Claim Number: FA2102001933397) provides a very helpful example of the overlap between arbitration and the courts. While the decision is not unique, it nonetheless offers a good example of where Uniform Domain-Name Dispute-Resolution Policy (UDRP) panellists may dismiss a case because it is really a commercial dispute, i.e. one that is better for the courts to determine.

The UDRP arbitration process is designed to have a limited scope in order to reduce time, costs and formality. This means that the UDRP Panel is restricted in the findings it can make, e.g. whether the domain name will be transferred or not, rather than investigating or determining complex factual matters.

UDRP matters do not exist in isolation. They provide one avenue for relief in the context of a bigger dispute between parties. Correspondingly, Paragraph 4(k) of the UDRP allows a party to start a lawsuit in court either before or after UDRP proceedings. Indeed, UDRP Panels will often conclude a UDRP decision by acknowledging that parties may (or must) pursue litigation further for outstanding contract or intellectual property issues.

In dmarcian, Inc. v. Martijn Groeneweg / dmarcian Europe BV, the domain name dispute was complicated by an ongoing contractual dispute and litigation between the parties. The contents of the contract potentially set out the agreed rights of the Respondent to use the Complainant’s trademark, and were therefore essential to determining the Respondent’s rights under the UDRP. In this situation, the Panel has the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.

In that case, the Panel recognised the limit of its jurisdiction and its limited ability to elicit evidence in the same way that a court could, consequently dismissing the Complainant’s claim. The parties of course remain welcome to return to UDRP proceedings following the outcome of the court proceedings.

Max Slattery – Policy Officer, VSCL