While the UDRP is an efficient and relatively cost-effective mechanism by which a trademark owner can acquire a domain from a cybersquatter, it is not the only option. This is especially true since the proofs needed to win a UDRP are not the same as those required to win an ACPA federal lawsuit, although similar. If your UDRP Complaint requesting that the domain name be transferred is denied, you can still pursue an ACPA lawsuit for cybersquatting, as long as you do so within the applicable statute of limitations.
Should you be on the receiving end of a UDRP Complaint and lose, you have rights that may be worth pursuing. However, you do need to know that if you lose, you must file a lawsuit in a court of law to stay, or prevent, the domain name from being transferred to the Complainant that prevailed under the UDRP.
The UDRP is a form of adjudication, but as the below excerpt from a known case makes clear, it is no court of law.
Because the administrative process prescribed by the UDRP is "adjudication lite" as a result of its streamlined nature and its loose rules regarding applicable law, the UDRP itself contemplates judicial intervention, which can occur before, during, or after the UDRP's disputeresolution process is invoked. See ICANN, UDRP P 3(b), at http:// www.icann.org/dndr/udrp/policy.htm (Oct. 24, 1999) (stating that the registrar will cancel or transfer the domain name upon the registrar's "receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action"); id. at P 4(k) ("The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to [**16] a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded"); id. (providing that the registrar will stay implementation of the administrative panel's decision if the registrant commences "a lawsuit against the complainant in a jurisdiction to which the complainant has submitted" under the applicable UDRP rule of procedure). As ICANN recognized in designing the UDRP, allowing recourse to full-blown adjudication under a particular nation's law is necessary to prevent abuse of the UDRP process. See id. at P 1 (defining "reverse domain name hijacking" as use of the UDRP "in bad faith to attempt to deprive a registered domain-name holder of a domain name"). Thus, when a person obtains a domain name, the person agrees, in the registration contract with the registrar, to follow the UDRP as established by ICANN.
See Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617, 624 (4th Cir. 2003).
Thus, the UDRP is not your only option. You can proceed to court, you can try threat or cease and desist letters, and try negotiation. Be aware, as shown above, a court of law protects against reverse domain name hijacking, or the abuse of the UDRP by an alleged trademark owner without sufficient trademark rights in an effort to get a validly owned domain name. Contact an attorney today to discuss your options should you wish to pursue a domain name or if you happen to be on the receiving end of a cease and desist letter, UDRP Complaint, or ACPA lawsuit.
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