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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 or proceed to a decision “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute.” The Rule contemplates that such a filing be made by respondent; if by a complainant, initiating a UDRP proceeding after commencing a legal proceeding would be abusive. Ordinarily, termination decisions are not published, but the Panel in Visible Technologies, Inc. v. Visibli Inc., D2012-0904 (WIPO June 15, 2012) explained why it was necessary in that case:

The fact that the Complainant has also brought the Complaint appears to be an unnecessary waste of legal resources, designed to put unnecessary pressure on the Respondent. Accordingly, the Complainant’s conduct is deserving of public censure.

Where the domain name issue is already before a national court, it makes no sense for the Panel to render a decision. Paul McMann v. J McEachern, D2007-1597 (WIPO February 9, 2008) (Pending action in Massachusetts state court) and Jason Crouch and Virginia McNeill v. Clement Stein, D2005-1201 (WIPO January 31, 2006) (Pending action in California state court) were dismissed at the Respondents’ requests. “No purpose is served by our rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.” AmeriPlan Corp. id., v. Shane Gilbert d/b/a NewWave Solutions. Inc., FA 105737 (Nat. Arb. Forum April 22, 2002). Retaining jurisdiction is inappropriate where the matter before the Panel is clearly the subject of a judicial action. The United States Olympic Committee (USOC) and Chicago 2016 v. Steve Frayne, D2008-1079 (WIPO September 25, 2008) (<>). In that case the Panel elected to terminate the proceeding in response to respondent’s “emergency motion” on the grounds that it had commenced a federal action in federal court.

However, set against these views are decisions to go forward with the UDRP proceedings regardless of pending legal proceedings. In Vanity Shop of Grand Forks, Inc. V., Inc., FA1205001443435 (Nat. Arb. Forum June 20, 2012) involving <> Respondent explained it had recently filed a civil action against Complainant in the United States District Court, Northern District of California for a declaratory judgment of non-infringement of the domain name. In requesting that the Panel terminate the UDRP proceeding it contended that the domain name is composed of a common English word. The Panel cited as precedent for choosing to proceed to a decision Western Florida Lighting v. Ramirez, D2008-1122 (WIPO October 2, 2008). That Panel held that despite concurrent court proceedings it did “not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy.” The reason is that

This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation.

Panels have offered a variety of reasons for retaining jurisdiction. These include cases in which the Panel concludes that the timing of the filing is to delay determination of the dispute [Sanofi-aventis v. Milton R. Benjamin, D2005-0544 (WIPO August 12, 2005)]; or, where complainant seeks to enforce a judgment from a court of law involving a different domain name against the same respondent [MLP Finanzdienstleistungen AG v. WhoisGuard Protected, D2008-0987 (WIPO September 10, 2008) ]; or, the issues raised in a legal proceeding do not directly touch on the disposition of the disputed domain name [eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum January 3, 2007)]; or, where the complaint was filed in a court that did not commonly adjudicate intellectual property issues [Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum August 13, 2007)]; or, the filing of the complaint is done in accordance with a court order that referred the matter 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)]; or, where there is persuasive evidence of bad faith registration and bad faith use [Vanity Shop of Grand Forks, supra].

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  1. Suspending or Terminating a UDRP Proceeding - - June 27, 2012

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