UDRP complaint for grief.net and grief-recovery.com was dismissed at the National Arbitration Forum. The decision of the panel was not to proceed with the UDRP because of a pending litigation. The three member Panel said that when the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility. The Panel concluded that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP.
Complainant was The Grief Recovery Institute, LLC and The Grief Recovery Institute Educational Foundation, Inc. Respondent was Grief Recovery Institute, represented by Ahmed Bulbulia of Macera & Jarzyna, Ontario, Canada.
Respondent registered the grief.net domain name on April 21, 1998, and the grief-recovery.com domain name on August 31, 1996.
Complainant submitted a Complaint to the National Arbitration Forum on September 14, 2012. Pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David H. Tatham, Alan L. Limbury and Daniel B. Banks, Jr, as Panelists.
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 contended that the issues in the current dispute were beyond the scope of the UDRP and requested the Panel terminate the current UDRP proceeding. Respondent claimed 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.
Complainant argued that Respondent entered into a license agreement with Complainant’s predecessor in 1991 to hold authorized licensed seminars in Canada on behalf of Complainant. In 2010, Complainant shifted its online presence to a primary website at the <griefrecoverymethod.com> domain name, to which the disputed domain names were to be automatically directed. Respondent had at that time not paid Complainant any royalties and has failed to develop a new primary website for Complainant’s Canadian division, and instead attempted to maintain the old websites and deploy “LoadDNS” software on the <grief.net> and <grief-recovery.com> domain names. Complainant learned in 2011 that the disputed domain names were not redirecting to the new primary website as they should have, due to the LoadDNS software, and made Respondent aware of that fact in an attempt to gain his compliance. Respondent removed the LoadDNS software and took adverse control of the <grief.net> and <grief-recovery.com> domain names by changing the password to the account associated with the domain names, terminating the licensing agreement it had with Complainant, thereby revoking his authorization to use the GRIEF RECOVERY marks and his ability to manage the websites associated with the <grief.net> and <grief-recovery.com> domain names. Respondent began using the websites instead to misrepresent his role in Complainant’s company and compete with Complainant by holding seminars in Canada.