WIPO Arbitration and Mediation Center

Complainant is Clinomics Biosciences, Inc., a corporation located in Pittsfield, Massachusetts, USA.

Respondent is Simplicity Software, Inc., a corporation located in Waltham, Massachusetts, USA.

The domain name at issue is: <clinomics.com> ("the Domain Name").

The registrar is Network Solutions, Inc. in Herndon, Virginia.

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules of Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

Complainant submitted on June 22, 2001, and amended on June 26, 2001. The Response was submitted on July 25, 2001.

On August 14, 2001, the WIPO Arbitration and Mediation Center appointed Mark V. B. Partridge as single panelist.

Complainant provides clinical pharmaceutical research services. It claims without dispute that it has used the mark CLINOMICS in connection with its services since 1998. Complainant retained Respondent for web development services. In that capacity, Respondent registered the domain name <clinomics.com>. Complainant was not satisfied with Respondent's services, refused to pay several invoices and terminated the relationship on July 16, 1999. Respondent retained the ownership of the domain name in an effort to collect on the unpaid invoices. The amount in dispute appears to be over $100,000.

Complainant contends that the Domain Name is confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Names in bad faith. More specifically, Complainant contends that Respondent's use of the domain name as a bargaining chip in a commercial dispute is an act of bad faith.

Respondent claims that its use of the Domain Name to collect on unpaid invoices is a bona fide use. Respondent also contends that Complainant lacks rights in the mark, that the name is generic, and that this is really a business dispute outside the scope of the UDRP. Respondent also asks for a finding of reverse domain name hijacking.

Both parties in this proceeding rely on Map Supply v. On-line Colour Graphics, FA0096332, to support their position.

In Map Supply, the Complainant hired Multilynx, Inc. to build a web-site. Multilynx in turn contracted with Respondent to help develop the site. When Multilynx failed to pay Respondent for services provided, Respondent claimed ownership of the domain name. After reviewing the contract with Multilynx, the Panelist concluded that there was no contractual authority for the Respondent to take ownership of the Complainant's domain name as security against payment for money allegedly owed by Multilynx and ordered transfer.

Complainant relies on Map Supply for the proposition that holding a domain name in order to gain bargaining position over the rightful owner is a commercial use and bad faith. The decision provides support for that proposition in stating:

This is a novel case and does not quite fit within the four illustrations of bad faith expressed in Paragraph 4(b) of the [Policy]. Nevertheless, to re-register a domain name without any authority from the registrant in order to gain a bargaining position over the registrant – with whom it had no legitimate dispute – is unconscionable. (emphasis added).

Respondent relies on dicta in Map Supply that states a lien in a domain name may be a legitimate interest. In that regard, the decision states:

"The Respondent's argument does raise the interesting question whether an unpaid web designer once given control over a domain name by the client can retain it as a security for payment. In my view, this may be so. The law may recognize some sort of lien or charge against a domain name. To assert such a claim is to assert a legitimate interest. On that assumption, this could be a dispute to be decided by traditional means – as it would fall outside the scope of this tribunal". (emphasis added).

The Panelist in Map Supply concluded, however, that the matter before him did not involve a legitimate dispute over a lien: "The Respondent has failed to persuade me that there is any chance that the law would permit it, without the consent of the client, to take control of a domain name, and then retain control as a security against payment for web-design work.."

I believe that Complainant's reliance on Map Supply is misplaced in this instance. In Map Supply, the finding of bad faith arose from the fact that there was no legitimate dispute over payment between Complainant and Respondent. Rather, the dispute involved Respondent and a third party, Multilynx. Here, the parties admit there is a legitimate dispute over Complainant's payment of Respondent's bills. As noted in Map Supply, such a dispute, if properly documented and supported by applicable law, could give rise to a legitimate interest in the domain name as a lien to secure payment.

The claims of the parties here turn on whether or not there is a genuine dispute over Respondent's contractual or legal right to retain the domain name as security for payment. Neither party here has provided us with any written contract to show the terms on which Respondent was retained to provide services. Respondent states, however, that it was the intent of the parties in registering the domain name that Respondent would have the right to enforce its contractual rights through the exercise of a lien on the domain name. To decide this issue would require additional evidence and an evaluation of the commercial law of liens. Accordingly, I agree with the Panelist in Map Supply that such as dispute is outside the scope of proceedings under the Policy and is properly decided by traditional means.

Prior decisions have rejected complaints where the dispute is primarily contractual and therefore outside the scope of the policy. See Adaptive Molecular Technologies, Inc. v. Pricilla Woodward & Charles R. Thornton, WIPO Case No. D2000-0006 (February 28, 2000). That appears to be the appropriate course here, where the dispute turns on the resolution of legal matters outside the scope of the Policy. In declining to grant relief, I take no position on the merits of the fee or lien dispute that exists between the parties.

I also reject Respondent's claim that this is a case of reverse domain name hijacking. Reverse domain name hijacking involves an attempt by a trademark owner to take a domain name from another party without having a colorable legal right to do so. Here, there is a legitimate dispute over the right to hold the domain name, and Complainant is entitled to pursue that claim in an appropriate forum.

I find that this matter involves a commercial dispute outside the scope of the Policy. Therefore, Complainant's request for relief is denied.

Mark V.B. Partridge
Sole Panelist

Dated: August 28, 2001