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Appealing an Adverse UDRP Award

The Uniform Domain Name Dispute ResoThe Uniform Domain Name Dispute Resolution Policy is an arbitral process implemented in 1999 by the Internet Corporation for Assigned Names and Numbers as an alternative to suing an alleged infringing domain name holder in a jurisdiction where it can be found. The UDRP contains no internal provision for appealing an adverse award—it differs in this regard from some of the self-administered country code dispute resolution policies such as Nominet in the U.K.—but it contains language that would suggest that grievances can be litigated in a court of law in a mutually acceptable jurisdiction and even provides for a limited stay from canceling or transferring the registration of the domain name if the respondent (domain name holder) commences an action within a ten-day window.

Under U.S. law, the losing party in a UDRP has recourse under the Anticybersquatting Consumer Protection Act (ACPA) to challenge an adverse award in an original action (not an appeal). This is not true under U.K. law where the court has determined that it lacks subject matter jurisdiction for an original action from an adverse UDRP award notwithstanding provisions in the Policy that appear to establish a basis for an “appeal.” So, for the U.K. the right is illusory notwithstanding language to the contrary, as noted further below.

The Policy provides that either party may commence an action “in at least one specified Mutual Jurisdiction.” A Mutual Jurisdiction is “a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s Whois database at the time the complaint is submitted to the Provider,” Rule 1.

If the UDRP award denies the complaint, the complainant may commence an action under the ACPA against the registrant directly if it is amenable to service, or if not amenable an in rem proceeding in the location of the Registrar or the Registry. The ACPA enlarges venue to include the “registry,” 15 U.S.C. §1125(d). Statistically, judicial challenges by losing complainants are likely to be successful, while those by respondents are likely to be unsuccessful, although there are exceptions the earliest of which was Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 626 (4th Cir. 2003), summary judgment in favor of plaintiff, formerly Respondent in Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc. D2000-0505 (WIPO August 7, 2000).

Deference flows in only one direction. Courts of law do not defer to UDRP decisions. It has been held that “a federal court’s interpretation of the ACPA supplants a WIPO panel’s interpretation of the UDRP,” Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 28 (1st Cir. 2001); again, “because a UDRP decision is susceptible of being grounded on principles foreign or hostile to American law, the ACPA authorizes reversing a[n] [arbitration] panel decision if such a result is called for by application of the Lanham Act,” Barcelona.com; again, that a UDRP decision is not an “arbitration” as envisioned by the FAA, Parisi v. Netlearning, Inc. 139 F. Supp. 2d 745 (E.D.Va. 2001) construing 9 U.S.C., §§ 1-14; again, the “[r]eview []must be de novo and independent of any WIPO panel conclusion,” Parisi, supra; again, “the UDRP explicitly contemplates independent review in national courts,” Sallen, supra.

U.K. High Court held in Yoyo.email Limited v. Royal Bank of Scotland Group PLC and Others, [2015] EWHC 3509 (Ch) that “[P]roper construction of the UDRP clause 4k does not give rise to a separate cause of action in favour of the claimant [aggrieved domain name registrant].” The court further noted that “there is no practical utility in granting declaratory relief in this case because the UDRP scheme has dealt with the issue between the parties, because any declaration made by this Court could not alter the findings of the Panel and the effect of my conclusions on the application for summary judgment on the counterclaim render the claim otiose.” In other words, the under U.K. law an adverse award against the domain name holder is not only given deference it is conclusive.

In contrast, the Regional Court in Cologne in a de novo action by the Respondent in XM Satellite Radio Inc. v. Michael Bakker, FA0612000861120 (Nat. Arb. Forum February 27, 2007) held that “[w]hether the requirements stipulated by Paragraph 4(a) UDRP (on which the NAF Panel had based its decision) are satisfied or not is considered irrelevant.” Further, “[a]s the (US based) Complainant did not have any trademark rights for ‘XM’ in Germany (where both the Respondent and the Registrar were located) the court rejected any claims under applicable trademark law” Case no. 33 O 45/08, 16 June 2009. The Court continued (translation in part at adr.eu) “In court proceedings under Paragraph 4(k) UDRP the national court shall only apply the relevant national law (e.g. trademark or unfair competition law).”

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement here

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