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The Role of Local Law in UDRP Jurisprudence

Panelists early concluded that local law had no place in deciding rights to disputed domain names. “Panels should struggle to interpret the Policy in as uniform a manner as possible regardless of the location of the parties,” 1066 Housing Association Ltd. v. Mr. D. Morgan, D2007-1461 (WIPO January 18, 2008) (<1066ha.com>) (Both parties, U.K.; Transferred). Rather, they sought to create a harmonized, supra-national jurisprudence based on widely accepted principles of law. “The Policy is of international scope and the framers required it to be capable of practical application by a panelist that might be drawn from any jurisdiction (and more often than not a panelist who would not be drawn from the jurisdiction of either of the parties to a dispute),” Aubert France SA v. Tucows.com Co., D2008-1986 (WIPO March 17, 2009).

This approach has worked well for the most part and is rarely challenged, although national courts do not necessarily agree with the outcome and on occasion have applied local law to “reverse” the UDRP order. For example, the Circuit Court in Barcelona.com, Inc. v. Excelentisimo Ayuntadmiento de Barcelona, 330 F.3d 617, 624 (4th Cir. 2003) found in favor of the respondent who was the losing party in Excelentisimo Ayuntamiento de v. Barcelona.com Inc. D2000-0505 (WIPO August 7, 2000). The German respondent in XM Satellite Radio Inc. v. Michael Bakker, FA0612000861120 (Nat. Arb. Forum February 27, 2007) (<xm.com> ordered transferred to the complainant) commenced a de novo action in The Regional Court in Cologne. That court ruled that “[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.). Under UDRP law, it is irrelevant that the complainant does not have a trademark in the respondent’s country of residence.

In one particular area, however, which law the panelist applies – harmonized or local – can make a critical difference to the outcome of the case. This concerns a respondent’s legitimate interest in a domain name identical or confusingly similar to a trademark used for noncommercial commentary and criticism. Panelists have taken sides, so that who is drawn will decide the result. The tension in this area is officially recognized in the WIPO Overview. Paragraph 2.4 describes two main “views.” Differences on other issues get “majority” and “minority” labels. Adherents to View 1 reject importing unique national legal principles into the interpretation of paragraph 4(c)(iii) of the Policy. On the few occasions that this issue has advanced beyond the UDRP under the ACPA, U.S. courts have favored free speech. Lamparello v. Falwell, 420 F.3d 309 (2005).

The Panel in Aspis Liv Försäkrings AB v. Neon Network, LLC, D2008-0387 (WIPO June 2, 2008) (<aspis.com>) included two adherents of View 1. The dissenting member believed that “the Respondent has been improperly deprived of the Domain Name, in violation of his or its U.S. Constitutional rights of free speech, and feel that if this case were brought in virtually any court in the U.S., the result would be different” (emphasis added). Respondent subsequently commenced an ACPA action in which the Complainant (now defendant) defaulted in appearance, Neon Network, LLC v. Aspis Liv Försäkrings, No. CV-08-1188-PHX-DGC (USDC AZ July 22, 2009). The Court granted declaratory judgment that  the “domain name does not constitute trademark infringement under the Lanham Act and is not unlawful under the Anticybersquatting Consumer Protection Act.”

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