A three member panel UDRP panel denied the UDRP by The Grief Recovery Institute, LLC and The Grief Recovery Institute Educational Foundation, Inc. (“Complainant”), and Grief Recovery Institute on the domain names grief.net and grief-recovery.com
This panel citing pending litigation punted on the decision but pointed out that different UDRP panels have decided the issue differently.
I do think that is the proper decision and wish it was a universally accepted rule amongst UDRP panelists.
Here are the relevant facts and finding from the three member panel
Complainant is the owner of the GRIEF RECOVERY mark, as well as the GRIEF RECOVERY INSTITUTE mark and other GRIEF RECOVERY related marks.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GRIEF RECOVERY & Design mark (Reg. No. 2,019,818 filed February 23, 1995, registered November 26, 1996).
Respondent registered the grief.net domain name on April 21, 1998, and the <grief-recovery.com> domain name on August 31, 1996.
Respondent was an erstwhile licensee of Complainant’s business who failed to comply with the terms outlined in the licensing agreement, and eventually began operating his own competing business, using the disputed domain names to promote his seminars.
Respondent contends that the issues in the current dispute are beyond the scope of the UDRP and requests the Panel terminate the current UDRP proceeding.
Respondent claims that currently a dispute exists with the Federal Court in Canada based on the rightful ownership of the disputed domain names, and terminating the present UDRP proceeding in favor of determining the Canadian action is the most efficient manner of determining a just outcome.
Alternatively, Respondent denies that the <grief.net> and <grief-recovery.com> domain names are confusingly similar to Complainant’s GRIEF RECOVERY mark.
Complainant has no basis upon which to claim rights in the word “grief” alone, and Complainant did not disclaim the single word “grief” in its registered trademark.
Respondent has rights and legitimate interests in the <grief.net> and <grief-recovery.com> domain names, as he promotes his business in Canada using the domain names.
The domain names were at no time registered on behalf of Complainant.
“”Complainant argues that Respondent entered into a license agreement with Complainant’s predecessor in 1991 to hold authorized licensed seminars in Canada on behalf of Complainant. The agreement included the right to use the GRIEF RECOVERY trademarks in connection with the seminars and that misappropriation of Complainant’s marks would result in Respondent’s liability.…
