Mutual Jurisdiction may come back to haunt you.
At a session Friday afternoon at Domainer Mardi Gras I made the case that moving your domain names offshore may not be a good idea, both from a protection standpoint and logistics. Earlier in the day John Berryhill gave another possible reason to keep your domains on shore that I wasn’t aware of.
In response to a UDRP, a respondent can file a lawsuit to block the transfer of his or her domain name in the event of an unfavorable decision. According to the UDRP rules, the lawsuit must be in Mutual Jurisdiction, defined as:
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.
The hitch is that the complainant gets to choose which one. So if you are in the United States and you register your domains at a German registrar, you may have to go through the expense and hassle of filing a lawsuit over there. Of course this is a reason for people outside the United States to consider using a local registrar in their country, too.
“The hitch is that the complainant gets to choose which one.”
You are wrong. It is the respondent who chooses which one. It is the respondent who files the lawsuit and chooses the venue. Either the location of the reigistrar or the location of his address.
Fred: UDRP reads:
“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.”
and then the “Rules” for UDRP state:
“(xiii) State that Complainant will 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;”
So they only have to pick one. Let me know if I’m misreading this.
It would seem that you are correct. However it is very unfair to the Respondent. How would a Respondent who lives in France or Greece file a lawsuit in the US without paying a huge sum of money? This rule would seem to benefit deep pocketed reverse domain hijackers.
@ Fred – yes, it would seem you’d want to keep the domains in your country wherever you were. I emailed John to ask for clarification.
Of course, very few people end up filing lawsuits after UDRPs.
Fred,
In practice, you can read the NAF Model Complaint form here:
http://domains.adrforum.com/resource.aspx?id=755
“The Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to [b](choose one jurisdiction:[/b] a) the location of the principal office of the concerned registrar or b) where the Respondent is located, as shown by the address(es) given for the domain name holder in the Whois Database at the time of the submission of the Complaint to NAF.) ICANN Rule 3(b)(xiii).”
The rule was intended to provide at least one jurisdiction which is procedurally fair to the registrant since (a) the registrant’s location is eminently fair, and (b) the registrant chose the registrar.
If you are in France, and you want recourse to French courts, then if you use Gandi.net as your registrar, you will be able to run right into a French court in the event you lose a UDRP dispute.
However, the fetish that some registrars have made of this goes beyond the reason for the rule.
The purpose of the rule was so that there would be at least one place to which the registrant could turn that is, in some sense, chosen by the registrant – either in the registrant’s place of residence/business or in the place the registrant chose to register its domain name. Hence, the notion was that requiring the Complainant to admit to one of those, so that the Complainant could not fight jurisdiction in either one, was procedurally fair to the domain registrant, since the domain registrant’s location is eminently fair, and the location of the registrar is the situs of the contract to which the domain registrant agreed by selecting that registrar.
In reality, there may be multiple competent jurisdictions in which the underlying dispute could be heard – and there is the over-arching rule that most registrars follow, which is to lock domain names in the event of ANY litigation in ANY competent jurisdiction, or at least any jurisdiction that is not facially ridiculous.
Example: You and I are in the UK. I register a domain name in Australia. You file UDRP complaint and pick Australia as the 4(k) jurisdiction. I lose the dispute. Now, remember you and I are BOTH located in the UK. We can properly sue each other out the wazoo in the UK and the UK court would indisputably have competent jurisdiction over our suit. Absent the UDRP, the registrar would, as a matter of course, apply a litigation lock to the domain name. What’s odd is that, in the UDRP context, some registrars forget everything else they know, and follow the rule as if it acted in isolation from everything else. So, on top of the general consideration you picked up from the talk, there is the matter of how the registrar, as a matter of general policy handles litigation.
THEN, there is the “nuclear” issue that nobody talks about – does your jurisdiction, or the registrar’s jurisdiction actually provide a legal recourse in this situation. There is no literal “I want to reverse a UDRP decision” cause of action in any jurisdiction. In some places, the question of “what can I sue someone for” is limited to a specific list of things for which you can bring a lawsuit. That question “what can I sue someone for” is called a “cause of action” in legal terms. Now, in the US, I can use several causes of action – Declaratory Judgment of Non-Infringement (or non-cybersquatting, using the ACPA), Interference With Contract, and a couple of other things depending on the circumstances. But in most instances, you are asking a court to declare that your registration of the name was lawful (the language of UDRP 4(k)). HOWEVER, there are places in this world, and quite advanced ones, in which you can’t go into court to ask it whether you did something lawful as a matter of declaratory judgment. If the court of your jurisdiction doesn’t think a domain name is property – which is by no means a universally agreed proposition – then you can’t file a “quiet title” action, as that sort of action is called in property law. The drafters of the UDRP didn’t do a global survey of applicable causes of action, and a court may well ask “What are you doing here with this domain name UDRP trademark stuff?” In fact, I know of a hearing in a recent case where during a preliminary hearing a judge asked essentially, “What makes you think this court has the power to decide who in the world can or can’t use this domain name?” The first question that any court seeks to decide in any case is whether the court should be deciding the case at all.
Sometimes domain registrants do file in other jurisdictions. For example, in the LH.com case, the domain registrant sued Lufthansa in the Federal Court for the Southern District of New York. That was not the jurisdiction stated in the Complaint, and the UDRP Panel itself seemed to think that the UDRP rule was intended as a stand-alone requirement, instead of establishing at least one competent admitted jurisdiction. Now, Lufthansa unquestionably has offices in New York City and conducts business in New York City, and is subject to suit there. Nonetheless, in the court case, Lufthansa expended considerable preliminary effort trying to fight jurisdiction there. That effort was abandoned, the parties settled, and the domain registrant kept the domain name.
Clever readers who think they know why the Barcelona.com decision was reversed by the Fourth Circuit Court of Appeals might want to carefully read that decision. Popular, and wrong, wisdom sometimes believes that the decision turned on “Barcelona” being a geographic name. Under other circumstances, that might have been the result. However, the court didn’t need to go that far in order to decide why the domain registrant should keep the domain name. The decision is here http://pacer.ca4.uscourts.gov/opinion.pdf/021396.P.pdf . What I leave as an exercise for the reader is to complete this sentence in ten words or less: “The domain registrant won the Barcelona.com decision because…” My best answer has nine words.
“Of course, very few people end up filing lawsuits after UDRPs.”
They happen more often than most people think. They are frequently settled, but I’m aware of several dozen of them. The first one filed was in response to one of the first UDRP decisions by the NAF in buypc.com. The UDRP complainant didn’t show up, which also frequently happens in these cases. One of the more interesting ones followed the freebies.com decision in which not only was the UDRP decision reversed, but the underlying trademark registration was cancelled by the court.
After considering the Barcelona.com decision, you might want to consider the curious behavior of the UDRP complainant in this case, which followed the lomonaco.com UDRP decision:
http://www.ca11.uscourts.gov/unpub/ops/200811402.pdf
Among the more interesting currently pending post-UDRP suits are the aspis.com suit being pursued by the domain registrant in the federal court in Arizona, and the chillibeans.com suit being pursued by the domain registrant in the court of Grand Cayman.
The absolute record holder in post-UDRP suits is Texas International Property Associates (TIPA). They had a long run of UDRP losses – each of which was followed by a suit in their local Texas state court, which is their location and that of their registrar. Only the most determined UDRP complainants managed to go to Texas, remove the case to the federal court, and fight it out there. And, ultimately, at that point the cases tended to settle.
John, Thanks for that great answer!!!
John, thanks as always for your thorough answers. I had heard that Australia might be a difficult place to find legal recourse.
I know of at least one of John’s clients who no longer responds to UDRPs and just files lawsuits.
I didn’t realize TIPA took the lawsuit angle.
“I had heard that Australia might be a difficult place to find legal recourse.”
You may have heard that in connection with a situation about which I’ve heard wildly differing accounts from several of the folks involved. It’s probably worth getting an independent view of an Australian attorney not connected with that particular case.