3.9 Prior Business Relationship
Panels often determine that disputes involving parties with a prior business relationship, where the involvement of a domain name is ancillary to the main issues in dispute, are outside of the proper scope of the UDRP. The evidentiary and legal issues that are required to resolve such a complex dispute may not be appropriate to the very narrow scope of the Policy and would best be dealt with in a forum with more robust evidentiary tools including witnesses, cross-examination, discovery, etc. As such, the dispute may be inappropriate for adjudication under the Policy.
Even if a Panel were inclined to consider the dispute within the scope of the UDRP, the circumstances of such disputes may involve a domain name that was registered in good faith in furtherance of the mutual business relationship and then, according to the Complainant, repurposed for a bad faith use after the dissolution of the business relationship. Since the UDRP requires demonstrating both bad faith registration and use (see 3.1 And not Or), under such circumstances the Complaint would typically fail the bad faith conjunctive requirement.
Yet the existence of a prior business relationship between the parties does not necessarily require a finding that a dispute is outside the scope of the Policy, or that the Disputed Domain Name was registered in good faith. Circumstances that may serve to demonstrate a registration in bad faith include evidence that the registration of the disputed domain name occurred after a dispute has arisen in the business relationship or that the Respondent failed to follow the Complainant’s instructions to initially register the disputed domain name with the Complainant’s contact information.
Additional Information
Relevant Decisions
AE7, LLC v. feras H, Forum FA2310002064437, <ae7.net>, 3-member, Denied
The Panel considers the issue whether the <ae7.net> domain name should be transferred to Complainant under the Policy depends upon what relationship, if any, existed between Pinnacle and Respondent when the domain name was registered; whether and, if so, how the domain name is being used; what authority, if any, Respondent had as a shareholder of Pinnacle and as Manager of AE7 Abu Dhabi; and whether Respondent’s disqualification as a shareholder and termination of employment were valid. Further, the Policy issues are inextricably intertwined with the other numerous alleged breaches specified in the Complaint.
These circumstances satisfy the Panel that it is inappropriate to embark upon consideration of the merits of the Complaint. The administrative proceeding should be terminated.
Costa Rica Recovery, SA, SAH Holding Company, LLC v. Ryan Rivard, CIIDRC 21459-UDRP (2023), <costaricarecovery.com>, 3-member, Transfer
The Panel makes no comments or finding with respect to the merits of the contract dispute between the parties. That matter is completely outside the scope of this administrative proceeding, which is limited to the Domain Name itself. The contract dispute must be resolved in the appropriate forum.
Based on the evidence and submissions of the parties, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Name, as contemplated by Paragraph 4(c) of the Policy.
FONAR Corporation v. Admin, Domain, Forum FA2404002094549, <standupmri.com>, Denied
The Panel observes that the Complainant omitted to mention relevant information about its relationship with the Respondent in its Complaint…
As to the assessment of the subsequent use of the Disputed Domain Name, the Panel finds that the evolution and potential end of the relationship/agreement between the Parties remain unclear. Therefore, it is impossible for the Panel to take an informed decision on the good or bad faith character of the Respondent’s use of the Disputed Domain Name. Such assessment would rather fall within the jurisdiction of the appropriate local or national courts.
Emerson Electric Co. v. Ed Morrissey / Integrity, Forum FA2402002084365, <emersontower.com>, Transfer
Additionally, given the prior business relationship between the parties (Respondent, located in the same city of Complainant, had provided marketing consultancy services to Complainant), it is inconceivable that Respondent could have registered the domain name confusingly similar to Complainant’s EMERSON trademark for a mere chance without actual knowledge of the Complainant, its business and its rights in the renown EMERSON trademark and the intention to exploit such reputation by diverting traffic away from Complainant’s website or to tarnish such mark or to prevent Complainant from owning the disputed domain name.
Kostel, LLC and Constantin Calugher v. mohamad atef, Forum FA2405002100428, <alternativepods.com>, 3-Member, Denied
Two court cases involving these parties, the same business relationship they previously shared and the domain name are currently pending…In this case, control of the domain name is central to the other remedies sought in the court cases, as it is the only means by which the parties’ customers can gain access to the parties’ retail outlets. More importantly, resolving the domain name issue in this case necessarily involves sorting through the same competing factual allegations that will determine the other issues in those cases. The UDRP was intended to resolve cases of clearly abusive registrations…
This case arises out of the dissolution of a previous business relationship. As such it is outside the scope of the UDRP, and resolving the factual issues involved in this matter is well beyond the limited means available for that purpose under the UDRP.
Need Pty Ltd, Need Essentials IP Pty Ltd, Ryan Scanlon v. Steven Hay, LooseLabel, WIPO No. D2024-1491, <needessentialseu.com> and <needessentialsuk.com>, 3-member, Denied
In the absence of any contrary arguments or evidence, the above statements of the Complainants support a conclusion that they have given their consent (whether explicitly, or in light of the distributorship) for the registration and ownership of the disputed domain names by the Respondent and for their use by the Respondent for the distribution of the Complainants’ products in the European Union and the United Kingdom. The situation changed after the termination in 2023 of the distributorship, when the Respondent’s continued use the disputed domain names to sell its remaining stocks of the Complainants’ products was objected to by the Complainants, but this does not necessarily mean that the registration in 2016 of the disputed domain names was made in bad faith.
Manhattan Review, Inc. v. Nishin Kolakaluri, WIPO D2023-4940, <manhattanreviewglobal.com> and <manrevglobal.com>, Transfer
This case presents somewhat differently from the typical case under the Policy involving prior business relations between a complainant and a respondent. In the typical case, the domain name concerned is usually registered at the outset of the parties’ business discussions or at least during the currency of the commercial agreement between them with the intention that it be used in furtherance of certain mutual business purposes. In many such cases, it can be difficult for a complainant to show that such a domain name registration was probably motivated by bad faith, not only due to the passage of time but also because it can be difficult to impute a bad faith motivation to a person who appears to be engaging in prima facie good faith commercial activities.
Here, the disputed domain names were only registered by the Respondent a decade after the Respondent’s company had ceased to make payments in terms of the franchise agreement.
Liqui-Moly GmbH, Meguin GmbH & Co. KG Mineraloelwerke v. Registration Private, Domains By Proxy, LLC / Sayed Zainul Islam, Sadia Zain Shah Meguin Auto Panels LLC, Naseem Shah, WIPO No. D2022-0011, <meguin.com>, 3-member, Transfer
This is a complex case, with relevant dealings stretching over 10 years, with many disputed factual issues…In this case, the Panel considers that, despite having many facts, it is suitable for determination under the Policy. The parties raising many difficult issues does not necessarily make the dispute unsuitable for resolution under the Policy.
Chrisofix AG v. Sano-Trend Orthoservice GmbH, CAC-UDRP-103529 (2021) chrisofix.com, 3-member, Denied
However, applying the requirement that a Complainant show that both registration and use of a disputed domain name is in bad faith, the Panel concluded that the Respondent did not register the disputed domain name in bad faith, taking account of the then agreement between the parties regarding registration of the name, and the purpose for which registration took place, in the context of the Respondent’s then role as a distributor or seller.
Xerafy (Shanghai) Co., Ltd. v. Dennis KHOO / Khoo Hock Chuan / personal, Forum FA1905001843266, <xerafy.com> and <xerafy.co>, 3-member, Transfer
Complainant also contends that because Respondent was not only an employee, but CEO of Complainant, there is little question that he knew of Complainant’s rights in its marks XERAFY and XERAFY VERIFY. QUANTIFY, when he registered the disputed domain names in his own name without Complainant’s permission. By registering the disputed domain names with knowledge of Complainant’s rights in its marks, Respondent acted in bad faith. UDRP panels have consistently held that registration of a trademark-related domain name by an employee with knowledge of the trademark owner’s rights in the mark constitutes bad faith.