The UDRP as a nonexclusive forum for resolving disputes over domain name registrations allows respondents to remove complainant’s claim to a court of competent jurisdiction, Rule 4(k), which in the U.S. is a district court in one of the venues authorized under Rule 3(b)(xiii) (complainant’s agreement to mutual jurisdiction). Rule 4(k) requires proof respondent has commenced its lawsuit within 10 days of service of the UDRP complaint. The interesting question is, does the Panel have to terminate the proceedings if a timely complaint is filed?
The answer which is “no” comes from other provisions of the Policy and Rules. Whether to terminate, suspend or proceed to a decision is a matter of discretion. Rule 18. Terminating or suspending the proceedings is justified (but not necessarily conclusive) where respondent has acted timely in commencing an action in a court of competent jurisdiction; continuing the proceedings is justified (but not necessarily conclusive) where the dispute is limited to the domain names in issue.
Despite the timely filing of a complaint Panels may in the exercise of discretion retain jurisdiction because “[t]his administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation”) —W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (Panel proceeded under the UDRP despite concurrent court proceedings because—or terminate because the factual circumstances are sufficiently complex to put the dispute outside the scope of the Policy—SDT International limited company v. Telepathy, Inc., D2014-1870 (WIPO January 13, 2015 (“While it is true that in circumstances where there are concurrent court proceedings, a panel has a discretion to terminate or suspend, in my view that discretion should only be exercised where for some reason there is a difficulty in the panel coming to a decision under the terms of the Policy, e.g., because there are conflicts of fact which cannot easily be resolved without the benefits of discovery, cross-examination etc. In my view the merits of the case are clear on the face of the Complaint.”)
The most recent case on this issue aptly demonstrates why an already existing lawsuit (or one commenced under Rule 4(k) does not control the ruling. The Respondent in X-SCREAM VIDEO PRODUCTIONS INC. v. IT Manager, FA1505001619522 (Forum June 25, 2015) contends
it has a dispute with Complainant before the Superior Court of Justice in Ottawa, Ontario, Canada and that the ownership of the <videopages.info> domain name is merely a part of that court proceeding and also it is part of the disputed terms of a contractual agreement between the parties. While the disputed domain name is not expressly included in the claims, Respondent contends that the set of claims is non-exhaustive and should be constructively considered to include the <videopages.info> domain name as part of Complainant’s claim.
However, “the disputed domain name is not part of the claim.” This is one of those disputes between parties known to each other; rather than a dispute between strangers (as is most usual in UDRP cases) . This makes a difference in how the matter is to be deal with. Here, Respondent “renewed the registration of <videopages.info> domain name in 2013 under its name while being involved in a service agreement with Complainant since 2008 related to the “videopages” websites.” It took possession of the domain name when Complainant allegedly fell into arrears of its financial obligations to Respondent, which is the subject of the litigation, but the Panel found that it had neither a right nor a legitimate interest in the domain name and that its conduct amounted to abusive registration.
There are, as a matter of curiosity, Panels who have accepted the “defense” as stating a right or legitimate interest in the domain name, but the circumstances have to have the right alignment before ruling in respondent’s favor.
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