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Challenging Transfer Order Under the Anticybersquatting Consumer Protection Act

There is no administrative appeal to a UDRP order, but the aggrieved party has the right to challenge an order denying or transferring the disputed domain name in a court of law. For the respondent challenger, the UDRP provides a limited stay of 10 days to commence a legal action “against the complainant in a [mutual] jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure.” Paragraph 4(k) of the Policy (second sentence). The “mutual jurisdiction” requirement (discussed below) is a due process right that assures respondent of a venue. Absent a legal action the domain name will be transferred to the complainant.

The Anticybersquatting Consumer Protection Act, 15 U.S.C. §1114(2)(D)(v) (“ACPA”) provides,

A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) [the UDRP is such a Policy] may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this Act. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.

Invocation of the ACPA is not an appeal from a UDRP decision. The UDRP decision has no preclusive effect and federal courts do not defer to them.

The complainant in AirFX, LLC v. ATTN AIRFX.COM, FA1104001384655 (Nat. Arb. Forum May 16, 2011)now defendant in AIRFX v. AirFX LLC, CV 11-01064 (D. AZ October 20, 2011) moved to dismiss a one claim complaint under the ACPA for “reverse domain name hijacking.” The phrase “reverse domain name hijacking” is defined in the UDRP. It is not used in the ACPA, but the concept is implicit in the provision quoted above. An order directing transfer of a domain name creates a cause of action in favor of the domain name registrant, but the proof requirements of the two models are different. Plaintiff has to prove that its registration of the disputed domain name is “not unlawful.”

The defendant argued that to state a claim under the ACPA “plaintiffs must show that the defendant both knew of the plaintiffs’ legitimate interest in the domain name and harassed plaintiffs.” That is correct for a finding under UDRP, but not under ACPA. Defendant’s argument that it committed no wrong by “[m]erely defending [its] own trademark rights and bringing the (successful UDRP action” misstates the law. “[A] UDRP decision to transfer the domain name ‘triggers the right to sue’[for relief under the ACPA],” citing Mann v. AFN Invs., Ltd. CV-07-0083 (S.D. Cal. July 27, 2007). The “right to sue” of course is not conclusive of the merits of plaintiff’s claim so this case is worth following.

A second issue concerns venue. Defendant argued that the case should be transferred to the Southern District of Indiana “because it is the district in which defendant resides, the district where all documents relevant to its federal trademark reside, and where ‘all relevant witness reside’.” However, under UDRP Rule 3(xiii) of the Rules a complainant is required to select a “mutual jurisdiction” for venue in the event of an order of transfer. The term “mutual jurisdiction” is defined as “a court jurisdiction at the location of either (a) the principal office of the Registrar … or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s Whois directory at the time the complainant is submitted to the Provider.” Paragraph 1 of the Rules of the Policy. The court also rejected this argument, because plaintiffs did precisely what they were supposed to do, namely that they filed their action in “the location in which defendant expressly chose to litigate.”

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