Judge overturns WIPO decision.
United States District Judge Tana Lin has ruled in favor of domain owner Stanley Pace in a domain name dispute.
Pace owns about 60,000 domain names including celluvation.com.
Jos Daniel filed a UDRP against Pace in 2020 and won the dispute at World Intellectual Property Organization (WIPO). Pace then sued to overturn the decision.
Daniel stopped participating in the lawsuit and didn’t show up to the trial. When he did file responses to the court they were tardy, and frankly, non-sensical. Or, as the court put it:
The Court has received multiple notices from Defendant, improperly filed and addressed to various parties, stylized as “Due Process” notices that appear to oppose the Court’s authority
to hear the case against him, but Defendant seeks no cognizable relief from the Court’s jurisdiction.
Judge Lin ruled that:
- Pace’s use of the celluvation.com domain does not violate the ACPA
- Pace’s use of the celluvation.com domain does not violate the Lanham Act.
- Pace has established a claim for reverse domain name hijacking
However, the judge rejected an award of attorney’s fees. The judge noted that:
There is no evidence that Defendant’s claims in the WIPO arbitration or in this action were groundless, unreasonable, vexatious, malicious, fraudulent, unreasonable, or pursued in bad
faith. The factors considered under the WIPO policy are slightly different than the legal standards that apply to the claims brought under the statutes in this case. Nevertheless, the WIPO panelist found Pace lacked credibility primarily because he stated he conducted a trademark search when he registered the Disputed Domain and did not find any celluvation trademark when there were in fact two. While Pace satisfactorily explained this discrepancy to the Court, the fact remains that Defendant prevailed in the WIPO proceeding. Further, Defendant provided a reasonable and colorable defense in his Answer. He just ceased participating in the litigation process, so the Court was bound to make a decision based upon the facts presented at trial. Therefore, the Court will not award Pace attorney’s fees in this matter.
The ruling overturns the WIPO decision.
Newman & Du Wors LLP represented Pace. Daniel appeared pro se.