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					                            The UDRP, Mutual Jurisdiction, and
                              Remedies: A Panel Discussion




Presented For IDRC
Date September 5, 2008

Presented By Kristine Dorrain
National Arbitration Forum
Cybersquatting in the United States

 U.S. Court generally do not give any deference to a
 UDRP proceeding.
   Dluhos v. Strasberg, 321 F.3d 365 (3rd Cir. 2003)
   (holding that the UDRP contemplates the possibility of
   parallel litigation in federal court and that federal
   courts are afforded the ability to fully and completely
   review a UDRP decision)
   Barcelona.com, Inc. v. Excelentisimo Ayuntamiento
   De Barcelona 330 F.3d. 617, 625 (4th Cir. 2003).
   “Moreover, any decision made by a panel under the
   UDRP is no more than an agreed-upon administration
   that is not given any deference under the ACPA.”
Which principles of law apply?

 Because courts review UDRP decisions de novo,
 the U.S. law that a case is filed under would apply.
 Plaintiffs choose various causes of action, such as
 the ACPA, Trademark dilution, and Trademark
 Infringement.
 Courts do not apply the elements of the UDRP, per
 se, but the ACPA substantially mirrors the UDRP, so
 the principles of law discussed are more or less
 similar.
So What Does This Mean?

 The UDRP is a contract to which both parties agree.
 U.S. courts, therefore, do not evaluate a Panel’s
 analysis or remedy or the evidence provided in a
 UDRP. A U.S. court does not confirm or deny the
 decision as it would an Arbitration Award under the
 Federal Arbitration Act.
 For a U.S. Court to get a cybersquatting case, it
 needs to be a NEW claim filed in a court of
 competent jurisdiction, regarding a matter over
 which the court can exercise jurisdiction.
Mutual Jurisdiction

 UDRP Paragraph 4(k) Availability of Court
 Proceedings
   The mandatory administrative proceeding
   requirements set forth in Paragraph 4 shall not
   prevent either [the respondent] or the complainant
   from submitting the dispute to a court of competent
   jurisdiction for independent resolution before such
   mandatory administrative proceeding is commenced
   or after such proceeding is concluded.
Mutual Jurisdiction
 UDRP Paragraph 4(K) Availability of Court Proceedings
    If an Administrative Panel decides that your domain name
    registration should be canceled or transferred, we will wait ten
    (10) business days (as observed in the location of our principal
    office) after we are informed by the applicable Provider of the
    Administrative Panel's decision before implementing that
    decision. We will then implement the decision unless we have
    received from you during that ten (10) business day period
    official documentation (such as a copy of a complaint, file-
    stamped by the clerk of the court) that you have commenced a
    lawsuit against the complainant in a jurisdiction to which the
    complainant has submitted under Paragraph 3(b)(xiii) of the
    Rules of Procedure.
Mutual Jurisdiction
 Virtuality LLC v. Bata Limited, 138 F.Supp.2d 677
 (D.Md. 2001).
   Jurisdiction selected in the UDRP by complainant
   Bata was Maryland.
   Virtuality brought a claim in Maryland, listing NOW as
   a co-plaintiff and including state tort claims.
   Court found that Bata did not submit to jurisdiction in
   Maryland w/r/t NOW and w/r/t the state tort
   claims…ONLY to jurisdiction w/r/t the trademark
   claims and a challenge of the UDRP decision.
   NOTE: Court action was NOT filed within ICANN-
   mandated 10-day period (Policy para. 4(k)).
Mutual Jurisdiction
 Storey v. Cello Holdings, LLC, 347 F.3d 370 (2nd Cir. 2003).
    Storey filed a claim in court in the SDNY for trademark dilution
    but the claim was dismissed; Storey then filed a UDRP claim.
    Mutual jurisdiction was Virginia OR California.
    Cello lost the domain name in the UDRP and filed a claim
    challenging the UDRP in SDNY.
    Meanwhile Storey filed in Virginia to confirm the UDRP award.
    VA court stayed the case pending the outcome of the SDNY
    case, claiming the SDNY had jurisdiction.
    Storey claimed that the two mutual jurisdiction options were the
    only ones to apply.
    Court held that the only time the mutual jurisdiction applies is
    when a registrant seeks to delay implementation of a Panel
    decision and the time period is within the 10-day window per the
    UDRP (Para 4(k))—and this case was past the window.
Mutual Jurisdiction

 So, it appears that U.S. courts will find that the
 selected mutual jurisdiction is limited to UDRP
 challenges no other ancillary issues/claims and may
 consider the 10-day window to be significant.
 However, NBC Universal, Inc., v.
 NBCUNIVERSAL.COM notes that since litigation
 may commence at any point, before, during, or after
 a UDRP proceeding, the mutual jurisdiction
 provision is not binding.
Anti-Cybersquatting Consumer Protection
Act (“ACPA”) basics
 Jurisdiction must be personal to gain monetary damages.
 Jurisdiction may be in rem to obtain transfer or cancellation of
 the domain name.
 Elements are similar to the UDRP, but are structured a bit
 differently.
 ACPA does permit either transfer or cancellation of a domain
 name, but even if it did not, that would not affect the UDRP
 unless someone filed an entirely new action in court. U.S.
 courts do not modify UDRP decisions.
 15 U.S.C.A. § 1125(d).
How Does An Appeal Under
UDRP Para. 4(k) Work?
 15 U.S.C. § 1114(2)(D)(v) allows a domain name
 registrant to obtain an injunction preventing transfer
 of a domain name after a UDRP loss.
 This statute is sometimes referred to as the “reverse
 domain name hijacking provision” that protects
 domain name registrants from overreaching
 trademark holders.
   Sallen v. Corinthians Licenciamentos LTDA found
   that such a lawsuit was “a declaration of nonviolation
   of the ACPA.”
Barcelona.com, Inc. v. Excelentisimo
Ayuntamiento De Barcelona
  “…the ACPA authorizes a suit by a domain name registrant
  whose domain name has been suspended, disabled or
  transferred under that reasonable policy (including the UDRP)
  to seek a declaration that the registrant's registration and use
  of the domain name involves no violation of the Lanham Act
  as well as an injunction returning the domain name.
Thus, while a decision by an ICANN-recognized panel might be
  a condition of, indeed the reason for, bringing an action under
  15 U.S.C. § 1114(2)(D)(v), its recognition vel non is not
  jurisdictional. Jurisdiction to hear trademark matters is
  conferred on federal courts by 28 U.S.C. §§ 1331 and 1338,
  and a claim brought under the ACPA, which amended the
  Lanham Act, is a trademark matter over which federal courts
  have subject matter jurisdiction.”
330 F.3d. 617, 625 (4th Cir. 2003).
                             THANK YOU!
                              감사합니다




Kristine Dorrain, Esq.
Internet Legal Counsel
National Arbitration Forum

				
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