Using the UDRP to Recover Stolen Names

[jberryhill]

A question that comes up every now and again here is whether the UDRP can be used to recover stolen domain names in the absence of a trademark claim. There has been a small and mixed bag of UDRP cases on this line, and I've noted that the result is panelist-dependent. For anyone keeping score:

http://www.arb-forum.com/domains/decisions/309943.htm

However, although it appears from the record that Complainant was the victim of fraudulent activity, the purpose of the Policy is to deal with abusive domain name registrations by deterring the abusive practice known as “cybersquatting.” Thus, since the instant case primarily involves a fraudulent registration transfer, not cybersquatting, the Panel finds that this dispute is outside the scope of the Policy. See Decker v. Antwer, FA 263584 (Nat. Arb. Forum June 28, 2004) (“[S]ince the instant case does not involve the practice of cybersquatting and is more accurately described as a fraudulent registration transfer, the Panel finds that this dispute may be more suitable in a court of law as it exceeds the scope of the Policy.”); see also Digital-Logic AG v. Krechman, FA 235827 (Nat. Arb. Forum Apr. 8, 2004) (“[T]he Panel finds that this dispute raises potential contractual issues and suggests fraudulent activity on the part of Respondent, which failed to complete the transfer of the domain name at issue and subsequently renewed the name. Therefore, the Panel finds that the dispute is beyond the scope of the Policy.”); see also Commercial Publ’g Co. v. EarthComm., Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’” Cases where registered domain names are subject to legitimate disputes are relegated to the courts.).

[FineE]

It seems like getting a settlement for $15,000,000 from the registrar, a multimillion dollar house and a judgement for $60,000,000 and of course the domain back after close to a decade of litigation has been the only the option for a certain victim of domain transfer fraud. Lets keep in mind that sex.com was not worth over $60,000,000 when the fraud was committed back in 1994.

This could all have been avoided if the registrar had acted to reverse the fraudulent transfer once they became aware of the fraud. Instead they chose to litigate against the victim and eventually paid the price.

[Dave Zan]

Until now, unfortunately, nothing short of legal remedies can solve this rather
delicate problem. Not even the UDRP or any dispute resolution providers can
be used to "fix" it just like that.

JB, you noted in your initial post it's "panelist-dependent". Is there a case or
2 where an exception occurred, meaning the panelist/s rendered a judgement
that "aided" in recovering an allegedly stolen domain name?

[jberryhill]

Is there a case or
2 where an exception occurred, meaning the panelist/s rendered a judgement
that "aided" in recovering an allegedly stolen domain name?

Yes, I mentioned that. Am I doing your research this morning? No.

[Dave Zan]

Yes, I mentioned that. Am I doing your research this morning? No.

Of course not. But thanks for the quick answer.

[jberryhill]

A little searching here can often go a long way. We beat this subject to death fairly recently, and a bunch of cases are cited in that thread.