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Suspending or Terminating a UDRP Proceeding

Paragraph 18(a) of the Rules of the Policy authorizes the Panel in its discretion to suspend or terminate a UDRP proceeding “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute . . . or to proceed to a decision” (emphasis added). The authority imports into the proceedings the familiar prescript of judicial economy exercised in a court of law. Generally, it makes no sense to proceed to decision in a UDRP proceeding where there is a prior action pending or new action timely filed concerning the disputed domain name. Whether the Panel exercises its discretion “to suspend or terminate the administrative proceeding” depends on a number of factors including the status of the pending action.

The phrase “ ‘in respect of a domain-name dispute’ … cannot be that mere reference to litigation on a website somehow makes the domain name at which the website is hosted the subject of the litigation. Nor is a reference to a domain name in correspondence that is also about proceedings sufficient to make these proceedings,” Telstra Corporation Limited v. Sean Mullen, Network Administrator, D2010-0724 (WIPO June 15, 2010). The phrase also is not meant to include unsuccessful pre-arbitration applications in national courts to stay proceedings, Sonido, Inc. v. MU21C.COM Inc., D2006-0685 (WIPO September 6, 2006); unsupported allegations referring to a pending action in a national court, Allstate Insurance Company v. Aardvark (a/k/a Joseph Bologna, John Day, Paul Day, Jay Arby, Jay Bologna), and d/b/a Aardvark Internet Services, Allstate Information Exchange, Inc., Allstate.org, Inc., and Professional Publications, D2001-1346 (WIPO March 14, 2002); or lawsuits for copyright infringement and injunction that do not seek transfer of disputed domain names, Union Square Partnership, Inc., Union Square Partnership District Management Association, Inc. v. unionsquarepartnership.com Private Registrant and union squarepartnership.org Private Registrant, D2008-1234 (WIPO October 22, 2008).

TTAB proceedings as a court of law have mixed results. The Panel in Family Watchdog LLC v. Lester Schweiss, D2008-0183 (WIPO April 23, 2008) analogized the TTAB proceeding to a pending lawsuit and denied the complaint, whereas the Panel in Private Communities Registry, Inc. v. Himalaya Rankings LLC and John Sweeney, FA0808001220432 (Nat. Arb. Forum October 23, 2008 held that the PTO is not a “legal proceeding … in respect to a domain name dispute.” There is no basis for suspension or termination where the “filing of the Complaint was done in accordance with a court order, that the matter be referred to arbitration under the Policy despite the pendency of that action,” BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight, D2009-0958 (WIPO September 15, 2009).

In Telstra, the Respondent “asked that the proceedings be adjourned because of [an alleged pending litigation before] … the Australian Administrative Appeals Tribunal.” The Respondent contends that the use of <teamtelstra.com> “is a play on words in relation to Telstra’s association with parties ‘it should not be associated with’ and that the Respondent intends to publish further genuine criticism on the site, once the AAT Litigation has been resolved.” However, the matter before the AAT is not litigation, but a “freedom of information” request. “The Respondent says that he will post more information critical of the Complainant to the website once the AAT Litigation is complete,” but offered no evidence to support this assertion. In any event, calling a request for information a litigation does not support suspension or termination since it is neither a legal proceeding nor one that would qualify as such “in respect of a domain name dispute.”

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

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