How to challenge a UDRP Decision

WIPO head office, Geneva

Author Melatron

Reproduced under a Creative Commons licence

Source Wikipedia

Jane Lambert

In my experience as a domain name dispute resolution panellist for the WIPO as well as a member of the Bar who has advised and settled pleadings for both complainants and respondents, most domain name disputes are straightforward. Moreover, most complaints are decided in favour of the complainant.  Of all the cases that have been referred to WIPO since 1999, some 21,399 or nearly 86.0% have resulted in a transfer to the complainant and 407 or 1.6% in a cancellation. A complaint has been denied in only 3,086 cases making 12.4% of the total (see Case Outcome (Consolidated): All Years on the WIPO website).

Those figures are hardly surprising as it is rare for a complaint to be defended and even rarer for a response to disclose any merit. It can therefore be said with some confidence that most panellists' decisions are likely to be right. Consequently, those decisions will not often be challenged but every so often a party is aggrieved at a decision and wants to take it further. There is an appeals procedure in Nominet's Dispute Resolution Service Policy for decisions in respect of ".uk" domains but not in ICANN's Uniform Domain Name Dispute Resolution Policy ("UDRP") for generic top level domain names such as those ending in ".com", ".org" or ".info". What happens if you or your client want to challenge a decision by a panellist appointed by the WIPO, the Czech Arbitration Court or any of ICANN's other domain name dispute resolution service providers?

The first point to remember is that the UDRP is a form of alternative dispute resolution but not full blown arbitration and therefore does not seek to oust the jurisdiction of the courts. My colleague David Bernstein of  Debevoise & Plimpton LLP in New York City once characterized the procedure pithily as an interim custody arrangement for domain names. Paragraph 4 (k) of the UDRP states:

"The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you 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." 

As a condition for filing a complaint, paragraph 3 (b) (xiii) of the UDRP Rules requires complainants to submit with respect to any challenges to the jurisdiction of the courts of the country in which the registrar of the domain name or the respondent is domiciled.

The second point is that challenges have to be made very promptly. Paragraph 4 (k) of the UDRP provides:

"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", in this context, means the registrar.  The registrar is bound to implement a panellist's decision unless it receives from the respondent during those business days official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that the respondent has commenced proceedings against the complainant in a jurisdiction to which the complainant has submitted under paragraph 3 (b) (xiii) of the Rules. If the registrar receives such documentation within those 10 business days it will not implement the panellist's decision. Indeed, it will take no further action, until it receives satisfactory evidence of:

(i) a resolution between the parties;
(ii) dismissal or withdrawal of the law suit
(iii) an order dismissing the law suit or finding that the respondent does not have the right to continue to use the domain name. 

If the complainant agrees to submit to the jurisdiction of the English courts a challenge will usually be brought in the Chancery Division of the High Court of Justice, the Intellectual Property Enterprise Court ("IPEC") or a county court with a Chancery District Registry attached (see CPR 63.13 and paragraph 16 of the Part 63 Practice Direction). As IPEC including its small claims track is part of the Chancery Division there seems to be no reason in principle why a challenge should not be launched out of that court though the claimant might have difficulty in obtaining leave to serve the claim form outside the jurisdiction or in resisting an application to transfer the case to the multitrack.

The grounds upon which a UDRP decision may be challenged will vary. The WIPO lists a Selection of UDRP-related Court Cases on its website.  In Marchex Sales Inc. v. Tecnologia Barcaria S.A. (unreported), the most recent case on the list, the US District Court for the Eastern Division of Virginia, injuncted the registrar from transferring the disputed domain name to the defendant's bank which had been ordered by the majority of a three-member panel in Case No. D2014-0834 Tecnologia Bancaria S.A. v. Marchex Sales Inc 24 Sept 2014 in what appears to have been a default judgment. Much the same seems to have happened in Walter v Ville de Paris 14 Sept 2012 (unreported) in respect of Case No. D2009-1278 Ville de Paris v. Jeff Walter 19 Nov 2009. However, challengers are not always successful as Patel v Endo Pharmaceuticals Inc, [2006] EWHC 3461 shows.  Often the case will turn on the construction of the registration agreement and sometimes on the validity of the trade mark.  Those seeking to challenge a domain name decision may also be able to take advantage of s.21 of the Trade Marks Act 1994 as a small English computer company did when threatened by a mighty US multinational in Prince Plc v Prince Sports Group Inc. [1998] FSR 21.

Should anyone wish to discuss this article or domain name disputes generally, he or she should call me on +44 (0)20 7404 5252 during office hours, or send me a message through my contact form.