Plenary Adjudication After An Adverse Decision

Plenary Adjudication After An Adverse Decision


The UDRP does not provide for an administrative appeal from an adverse order. Rather, recourse must be a de novo law suit under national law which, in the case of the United States would be a claim under the Lanham Act, infringement of a registered mark (§1114) and false designation of origin (§1125(a)), Federal Trademark Dilution Act “FTDA” (15 U.S.C. §1125(c)) and the Anticybersquatting Consumer Protection Act (“ACPA”) (15 U.S.C. §1125(d)).   In this respect, the Policy is unlike some country code domain resolution policies which provide for an appeal and which appeal must be undertaken – an exhaustion of remedies rule – before further recourse to national court.  
 
If the respondent is the contesting party he must act within 10 days to take advantage of the automatic stay of transfer [Paragraph 4(k) of the Policy] and if he acts he has a choice of venues stemming from the complainant’s agreement to “submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction,” Rule 3(b)(xiii).   The term “mutual jurisdiction” is defined to mean
 
a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider. (Paragraph 1 of the Rules).
 
In essence, by submitting to a “mutual jurisdiction” – which the complainant must do to take advantage of the UDRP – he gives the respondent the advantage of adjudicating the dispute under its own national law. In one of the formative cases, the Panel stated that this “additional forum is provided not by operation of law, but by contract between Complainant and the Center, and Respondent is a third-party beneficiary of that contract,” Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO March 14, 2000).
 
However, pursuing further a claim for trademark infringement or abusive registration under the ACPA may put the complainant in the unenviable position if it cannot obtain jurisdiction in its home court of having to prosecute an action in a foreign one, although the statute assists the trademark owner by authorizing an action in rem by serving “the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name” in the judicial district in which one of them is located. 15 U.S.C. §1125(d)(2)(A).

Only a small number of ICANN decisions have been challenged in U.S. Federal courts, sometimes affirming and other times rejecting the Panel’s reasoning. This can be seen in two federal cases, both of which are currently subjudice, General Media Communications, Inc. v. Crazy Troll c/o CrazyTroll.com, FA0602000651676 (Nat. Arb. Forum May 12, 2006) and Deutsche Lufthansa AG v. Future Media Architects, Inc., FA0802001153492 (Nat. Arb. Forum April 17, 2008). There is no statutory mechanism in the United Kingdom comparable to the ACPA, but a lawsuit recently determined in a U.K. court by the losing respondent in Allos Therapeutics, Inc. v. Kumar Patel, D2007‑0521 (WIPO June 11, 2007 ) “affirmed” the Panel’s holding that the Plaintiff registered and was using the domain name in bad faith. The court decision in Allos was brought to my attention by Jeremy Phillips in his IPKat blog.
 
The Panel in General Media Communications denied the complaint (<penthouseboutique.com>) but granted the Respondent’s application for a finding of reverse domain name hijacking. The Complainant challenged the entire order in the Southern District of New York (Index No. 06 CIV 4051).   On a motion for partial summary on the issue of reverse domain name hijacking, the court held that “GMCI did not initiate or pursue the UDRP proceeding or this action in bad faith and has not engaged in actual or attempted reverse domain name hijacking” (January 16, 2007).   The balance of the claims have not yet been decided. 
 
In Deutsche Lufthansa, the Respondent timely filed a complaint in the Southern District of New York April 2008 to prevent losing its domain name <lh.com>).   A Comment will be forthcoming on this case when there is any decision to report. The Complainant challenged the entire order in the Southern District of New York On a motion for partial summary on the issue of reverse domain name hijacking, the court held that “GMCI did not initiate or pursue the UDRP proceeding or this action in bad faith and has not engaged in actual or attempted reverse domain name hijacking” (January 16, 2007). The balance of the claims have not yet been decided.
 
Since the “jury’s still out” on the recent ACPA cases, I will confine this Comment to Patel’s defense in the WIPO decision and his prosecution of a U.K. action. Patel argued in the UDRP case that his registration of the domain name was privileged because he intended to use it as a criticism and comment site. However, the WIPO Panel found that the stated intention alone could not lead to a finding that the Respondent had a legitimate interest in the disputed domain name. (A similar finding was made in another of Respondent’s cases, Gilead Sciences, Inc. v. Kumar Patel, D2005‑0831 (WIPO November 17, 2005).   In order to succeed in stating an affirmative defense under any of the ¶4(c) elements, the alleged criticism site must either be “developed or active” before the dispute arose. The disclaimer displayed on the website did not, on its own, legitimize the web site for a non‑commercial or fair use of Complainant’s trademark (see the similar case of Abbott Laboratories v. Kumar Patel, (FA 1740337 Nat. Arb. Forum, August 15, 2006). 
 
Patel had also been an unsuccessful plaintiff in a prior court challenge in the U.K. as well as respondent in a number of other WIPO and Nat. Arb. Forum cases. In making his case in the plenary action, Patel argued again that he intended the domain name to be used as a criticism site. The landing page, however, stated only that it will be used “in time” as “the focal point for people to share their bad experiences” in relation to the Complainant’s services or products. Plaintiff offered no concrete evidence of his stated intention. Judge Proudman patiently reviewed Plaintiff’s theories of action, including causes that the ICANN order infringed his right to freedom of expression under Article 8 of the European Convention on Human Rights, defamation, malicious falsehood and wrongful threats to sue for trade mark infringement. On the merits, Sonia Proudman QC observed that freedom of expression “is not an unqualified right, and must be balanced against the rights of others, such as the rights of a minority not to suffer abuse or, as in this case, the rights of a trade mark owner freely to enjoy its own rights and property.” She concluded that
 
[Mr. Patel] cannot accept that he is the aggressor, not the victim. He is not debarred from making legitimate criticisms of pharmaceutical companies nor from setting up proper criticism websites from which he and others might do so. Instead, he had chosen to usurp names and logos contrary to the UDRP policy.
 
The U.K. court dismissed the Allos action in its entirety as being without merit.