ybc-logo-tm-300x283An NAF Panel refused to transfer the domain yourbabycandiscover.com to the Complainant, Your Baby Can, LLC, largely on the basis that the domain is the subject of a contract dispute between the parties which is already being litigated in California State Court and therefore falls outside the scope of a UDRP.
In the lawsuit, the Complainant claimed that Respondent Raoul Edmonds was a mere licensee of the Infant Learning Company, which is the true owner of the yourbabycandiscover.com domain and that Respondent’s company, Cafe.com, contracted with Complainant to be an international distributor/licensee of the Complainant’s products, with rights at all times subject to the licensing agreement. The Complainant alleged that because it terminated the agreement as a result of Mr. Edmond’s failure to pay royalties, all rights in the YOUR BABY CAN DISCOVER trademarks reverted and Respondent no longer held rights to the domain.

In addition to the California litigation, there has been controversy surrounding the Complainant’s YOUR BABY CAN READ product which is under investigation from consumer watch-dog groups for claiming that infants can benefit at an early age from watching television.

The decision is consistent with Policy ¶ 4(k), which “requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute until the court proceeding is resolved. Therefore, a Panel should not rule on a decision when there is a court proceeding pending because no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.” Water Feature Supply v. Patrick Maloy, FA 1203001434296 In some cases where there are allegations which fall outside the scope of the UDRP, panels have still rendered a decision where they determined the primary dispute was still over the domain. For example, in Estate of James Brown v. Owned by LAC Music, regarding the domain jamesbrown.com, the Panel found that even though the Complainant (the Estate of James Brown) made various arguments which questioned the status of the Respondent as Mr. Brown’s agent, it found that the “dispute is governed by the UDRP and not any agency, estate or evidence laws, and as such, the Panel has disregarded these arguments. While Policy ¶ 4(k) allows the parties to litigate these points in court, the Panel finds that, even though these types of arguments may be suitable in a court litigation context, they are not applicable to this arbitration proceeding which is limited to the scope of the UDRP and its elements.”

Here the Panel declined to comment on bad faith, legitimate rights or substantial similarity, and reminded us that “[i]t is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.” Frazier Winery LLC. V. Hernandez, FA 841081. Thus, even though a panel can certainly ignore extraneous arguments from a Respondent that are tangential to the issue of who holds the legitimate rights to the domain, where the panel finds that those issues are themselves intertwined with the ownership issue, it is likely that the panel will refuse to make a decision and thereby deny the claim.

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