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Challenging a UDRP Order Denying Complaint or Granting Cancellation or Transfer

There is no provision under the UDRP for an administrative appeal from an adverse order granting or denying the complaint. Rather, the loser’s recourse is to commence a de novo law suit under the national law of its jurisdiction, which in the case of the United States would be a claim under the Anticybersquatting Consumer Protection Act, [specifically, §1125(d) of the Lanham Act]. If the Panel rules in favor of the complainant the respondent must act within 10 days of the issuance of the order to take advantage of the Policy’s automatic stay of cancellation or transfer [paragraph 4(k) of the Policy]. While a respondent’s failure to act timely does not affect its right to contest the UDRP order it will lose control of the domain name to the complainant pending the outcome of the litigation.

The Policy provides that either party may commence an action “in at least one specified Mutual Jurisdiction. Rule 1 of the UDRP defines Mutual Jurisdiction as

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.

If the order 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. Notice that ACPA enlarges venue over Rule 1 of the UDRP to include the “registry.”

Statistically, judicial challenges by losing complainants are likely to be successful. The most recent decision is illustrative. The plaintiff in Volvo Trademark Holding AB v. Volvospares, 1:09 cv 01247 (E.D. Va. Apr. 1, 2010) (formerly the Complainant Volvo Trademark Holding AB v. Volvospares / Keith White, D2008-1860 (WIPO February 10, 2009)) won summary judgment transferring the domain name. Challenges by respondents are likely to be unsuccessful, although there are exceptions. Unsuccessful: Lahoti v. Vericheck, C06-1132JLR (WDWA, 2007), aff’d __ F.3d __ (9th Cir. 2009), after losing in Vericheck, Inc. v. Admin Manager, FA0606000734799 (Nat. Arb. Forum August 2, 2006); Yung v. Bank of America Corp. (S.D.N.Y. 2-16-2010), after losing one of two domain names in Bank of America Corporation and Merrill Lynch & Co., Inc. v. Webadviso, FA0903001254121(Nat. Arb. Forum May 15, 2009) (district court awarded both domain names to plaintiff).

Respondent exceptions: 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); 3 member Panel in XM Satellite Radio Inc. v. Michael Bakker, FA0612000861120 (Nat. Arb. Forum February 27, 2007) unanimously decided to transfer <xm.com>; de novo action in The Regional Court in Cologne held in Respondent’s favor: “[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, translation adr.eu.

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, supra.; 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; again, the “[r]eview [] must be de novo and independent of any WIPO panel conclusion,” Parisi, Id. at 752. Sallen, supra. 273 F.3d at 20: “[T]he UDRP explicitly contemplates independent review in national courts.”

Levine Samuel, LLP. <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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