Complainant Cary Pinkowski, Darren Little, and Joe Whitney (together the “Complainant”), which were represented by Eric Misterovich of Revision Legal, Michigan, USA, was just found guilty of Reverse Domain Name Hijacking on the domain name Blackjack.com

The three member UDRP panel of Sandra J. Franklin, Dawn Osborne and The Honourable Neil Anthony Brown QC  quickly dismissed the complaint finding that the Complainants which previously owed a company, Hanger Holdings Limited, which previously owned blackjack.com dispute with the current owner was well outside the scope of the UDRP.

Here are the highlights:

Respondent submits that this dispute concerning the <blackjack.com> domain name is inherently a fact-sensitive contractual dispute, and that it is therefore entirely beyond the scope of the UDRP.

Respondent asserts that it acquired rights to the domain name pursuant to an Agreement between Hanger Holdings Limited and Respondent in 2003.

Respondent urges that Complainant’s Complaint is premised on Respondent’s having materially breached this Agreement.

While Respondent concedes that material breach would result in the domain’s ownership being reverted to Hanger Holdings Limited, Respondent denies engaging in any activity that would constitute a material breach.

In addition, Respondent contends that the Agreement is governed by English law, and therefore requires notice to Respondent in regard to any potential breaches through personal service in Uruguay, as stipulated by the Agreement.

Furthermore, Respondent challenges Complainant’s standing to bring a claim against Respondent, as Hanger Holdings Limited has been dissolved.

It is submitted that as a Cayman Islands corporation, it is necessary to evaluate the laws of the Cayman Islands in order to determine if Complainants have the ability to prepare such a document purporting to divide the assets of Hanger Holdings Limited between Complainants, or if such assets, having not been previously divided, became property of the Cayman Islands Government’s Financial Secretary.

Complainants readily admit that they transferred ownership of the <blackjack.com> domain name to Respondent in 2003, per the Agreement provided in Annex K.

However, Complainants argue that because the Agreement contains provisions by which ownership of the domain name can revert to Complainants, the agreement is most accurately characterized as a License Agreement for the blackjack.com domain name and the BLACKJACK.COM mark, and as such, the dispute is fully within the scope of the UDRP.

The Panel finds that the dispute that is the basis of the Complaint is a business and/or contractual dispute between parties that clearly falls outside the scope of the UDRP. In that regard the Panel is of the opinion that the observations of the panel in Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007) are applicable to the present proceeding.

In that decision, the panel stated:

“A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.”

The Panel concludes that the instant dispute contains numerous questions that clearly take the dispute outside the scope of the UDRP. It involves at least the following issues and conceivably more.

First, it involves serious questions of the standing of Complainant to bring the Complaint.

Then, it involves issues relating to the terms and effect of the Agreement referred to above.

Next, it involves issues of whether Respondent was in breach of the Agreement and, if so, the consequences of any such breach.

Moreover, it involves questions of the proper law to be applied; notice given or not given of alleged breaches of the Agreement; and questions of company law and the rights of parties in view of the dissolution of Hangar Holdings Limited and how its assets should be distributed and by whom, including the rights of parties who are not parties to this proceeding such as creditors.

Finally, on the many and varied questions of fact and law that arise, Respondent has made it plain that it will strenuously contest Complainants’ allegations, inevitably giving rise to a contested trial.

The consequences of there being so many issues in the dispute are at least two fold.

First, the whole dispute is not the type of dispute contemplated by the Policy but, rather, it is the type of dispute that has on many occasions been said to be outside its ambit.

Secondly, no matter in what forum the dispute is heard, the known issues of fact and law are clearly capable of resolution only after a hearing that in all probability will involve examination and cross examination of witnesses, discovery, evidence of the applicable law and other processes that UDRP panels are not equipped to administer and which in any event are not provided for under the Policy or the Rules made under it.

As the Panel dismisses the Complaint for the reasons given above, it is neither necessary nor appropriate for it to express opinions on the specific issues arising for consideration under the UDRP.

Respondent has alleged that Complainant has acted in bad faith in filing the Complaint and has engaged in Reverse Domain Name Hijacking by initiating this proceeding.

In the present case, the Panel finds that Complainant must have known and in all probability did know, that it was bringing its claim in the wrong forum because the dispute was inherently a complicated contractual dispute beyond the scope of the UDRP and it must also have known that both the terms of the Policy and the accepted practice prevented such a claim from being entertained in this forum.

Accordingly, Complainant must have known that it could not prove Respondent lacked rights or legitimate interests or that Respondent had engaged in bad faith registration and use of the domain name.

Moreover, the case presented by Complainant was such that it required Complainant to rely on a series of contentious allegations that could only be proved, if they could be proved at all, by evidence and argument completely beyond the limited processes available in proceedings under the Policy.

Accordingly, in all the circumstances, the Panel finds that the Complaint was brought in bad faith in an attempt to deprive a registered domain-name holder of its domain name and primarily to harass Respondent as the domain-name holder.