Appendix A appeared in the First Edition of Domain Name Arbitration and is here updated and Appendix B is new for the Second Edition scheduled for publication December 2018. They are published here with live links for convenience of those wishing to examine the documents or court decisions. The E-book will have live links.

Mr. Levine’s essays on udrp decisions can be found at and on his Firm’s website at



1. The Final Report of the WIPO Internet Domain Name Process, subtitled “The Management of Internet Names and Addresses: Intellectual Property Issues” (April 30, 1999)
2. Report of the Second WIPO Internet Domain Name Process: Recognition of Rights and the Use of Names in the Internet Domain Name System, dated September 3, 2001
3. ICANN Second Staff Report (October 24, 1999) (Implementation document)
4. The Uniform Domain Name Dispute Resolution Policy
5. The Rules of the Uniform Domain Name Dispute Resolution Policy
6. Supplemental Rules, World Intellectual Property Organization
7. Supplemental Rules, Forum
8. ICANN Registrar Accreditation Agreement
9. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
WIPO Overview, Original Edition; WIPO Overview, Second Edition
10. WIPO Search Decisions.
11. WIPO Decisions by Year
12. Forum Decisions (formerly National Arbitration Forum)
13. eResolution Decisions
14. Arbitration Center for “.eu” Decisions
15. ADNRC-Asian Domain Name Dispute Resolution Centre
16. Consolidated Search of all Providers, <> (became dark January 7, 2018) Search WIPO
17. WIPO ccTLD Database
18. WIPO Statistics; see also
19. Australia (.au Domain Authority, Ltd. (auDA))
20. Canada Internet Registration Authority (CIRA)
21. New Zealand (nzDomain Name Commission)
22. United Kingdom Domain Name Resolution Services (ukDRS)


Challenges to UDRP Awards, Direct Action for Claims of Cybersquatting, and
Other Matters Relating to Domain Names

A. Domain Name Holder (as Plaintiff)
A(i) UDRP Award Vacated
A(ii) UDRP Award Confirmed
B. Trademark Owner (as Plaintiff)
B(i) UDRP Personal Name (No UDRP)
B(ii) UDRP Award Vacated (in favor of Trademark Owner)
B(iii) UDRP Award Confirmed (in favor of Trademark Owner)
B(iv) Paragraph 4(k) invoked to interfere with transfer of domain name (transfer enjoined)
C. U.S. ACPA Decisions (Direct Statutory Actions)
C(i) Trademark Owner Prevailed
C(ii) Registrant Prevailed
D. Free Speech (Critical commentary, Parody, etc.)
D(i) UDRP Claims
D(ii) Non-UDRP Claims
E. Garnishment
F. Settlements
G. Other Jurisdictions
1. Australia
2. Canada
3. France
4. Germany
5. India
6. UK
7. U.S.
(a) U.S. (Judicial review de novo under ACPA)
(b) Preliminary Injunction
(c) In Rem Jurisdiction
(d) Bankruptcy Court

A. Domain name Holder (as Plaintiff)

A(i) UDRP Award Vacated v. Airfx LLC., CV 11-01064 (D.Ariz. October 20, 2011) (Respondent in Airfx, LLC v. Attn, FA1104001384655 (Forum May 16, 2011) (Court held registration and renewal of the domain name was not unlawful. The issue of damages for reverse domain name hijacking was not before the court but it invited an application)., Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 626 (4th Cir. 2003) (Respondent in Excelentisimo Ayuntamiento de Barcelona v. Inc. D2000-0505 (WIPO August 7, 2000) (District Court Judgment reversed and remanded with instructions).
Mann v. AFN Invs., Ltd., CV-07-0083 (S.D. Cal. July 27, 2007) (Question whether Court has jurisdiction when the domain name has not been transferred. Answer: A UDRP decision to transfer the domain name “triggers the right to sue” for declaratory relief under the ACPA).
Marchex Sales Inc. v. Tecnologia Bancaria S.A., 14-cv-01306 (E.D. VA, Alexandria Division June 15, 2015) (Respondent in Tecnologia Bancaria S.A. v. Marchex Sales Inc., D2014-0834 (WIPO September 24, 2014) (Vacated on default; remedy limited to declaratory judgment. Magistrate Judge: “[To construe the UDRP as] subject[ing] a party to anything more than a challenge to the panel’s decision would be unfair and would be inconsistent with the due process clause of the U.S. Constitution.”)
Retail Services, INC. v. Freebies Publishing, 364 F.3d 535, 542 (4th Cir. 2004) (Respondent in Freebies Publishing v. Retail Services, Inc., FA0204000112565 (Forum July 15, 2002) (The “panelist’s finding that the [use of a] meta-tag is evidence of plaintiff’s opportunistic bad faith is directly contradicted by the evidence that the parties are not competitors”
Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 20 (1st Cir. 2001) (Respondent in Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises, D2000-0461 (WIPO July 17, 2000).
Walter v. Ville de Paris, 4:2009cv03939 (S.D. Texas Houston Div.) (<>. Respondent in Ville de Paris v. Jeff Walter, D2009-1278 (WIPO November 19, 2009. Award vacated on default; judgement included award of damages in the amount of $100,000).
A(ii) UDRP Award Confirmed
iSystems v. Spark Network, 3:08-cv-1175-N (N.D. TX, Dallas Div. September 19, 2014) (Unreported) (Respondent in Spark Networks PLC v. J2DATE, Inc., FA0505000482640 (Forum June 28, 2005) (Unreported: “[T]he NAF arbitration award was not based on any misrepresentation that the JDate Domain was dilutive of the JDATE Mark, but rather on the true representation that the JDate Domain was identical to, or confusingly similar to, the JDATE Mark,” Paragraph 10 Conclusions of Law).
Joshua Domond and Harold Hunter, Jr v. PeopleNetwork APS d/b/a Beautifulpeople.Com, Beautiful People, LLC, Greg Hodge, and Genevieve Maylam, 16-24026-civ (S.D. FL. Miami Div. 11/9/17) (Unreported) (Complainant in Beautiful People Magazine, Inc. v. Domain Manager / PeopleNetwork ApS / Kofod Nicolai / People Network Aps / Nicolai Kofod / People Network, FA1502001606976 (Forum May 4, 2015) (Complaint dismissed: “Plaintiffs’ allegations in the Second Amended Complaint establish that Defendants have priority of use. The allegations simply cannot state claims for trademark infringement.” Judgment includes attorney’s fees in the amount of $62,434.25.)
Lahoti v. VeriCheck, Inc., 708 F.Supp.2d 1150 (WDWA, 2007), aff’d 586 F.3d 1190, 1203 (9th Cir. 2009) and 636 F.3rd 501 (9th Cir. 2011) (Respondent in Vericheck, Inc. v. Admin Manager, FA0606000734799 (Forum August 2, 2006) (Confirmed, with damages and attorney’s fees).
Ricks v., LLC, 727 F. Supp. 2d 936, 960 (D. Nev. 2010) (Respondent in, LLC. v. Gregory Ricks / Gee Whiz Domains Privacy Service, D2008-0882 (WIPO August 21, 2008) (Motion for partial summary judgment denied, but good faith registration of domain name that postdates first use of trademark in commerce under U.S. law does not protect a registrant who subsequently uses the domain name in bad faith.)
Scott Stephens v. Trump Organization LLC., 205 F.Supp.3d 305 (2016) (Respondent in Donald J. Trump v. Scott Stephens, D2015-0478 (WIPO May 8, 2015) (“It is inconceivable that Stephens could, as the silence of his papers emphasizes, plead any facts that would entitle him to co-opt the Trump name.”)
Virtual Point v. Hedera, 13-CV-5690 (N.D.Cal. 4-29-2014) (Respondent in Hedera AB v. Support Desk, Captive Media, D2013-2102 (WIPO January 24, 2014) (UDRP complainant, a Swedish corporation whose U.S. attorney claimed she was not authorized to accept service. Plaintiff moved for an order to make alternative service but failed to comply with the form of service authorized by the Hague Convention: “Virtual cannot merely leapfrog over … means authorized by the Hague Convention or other usual methods deemed to be ‘reasonably calculated to give notice,’ as stated in Rule [FRCP] 4(f)(1) and (2), without a sufficient reason to do so.”)
Web-Adviso v. Trump, 927 F.Supp.2d 32 (E.D.N.Y., 2013) (Respondent in Donald J. Trump v. Web-adviso, D2010-2220 (WIPO March 5, 2011) (Confirmed with damages in the amount of $32,000).
Yung v. Bank of America Corp. 1:2009cv05769 (S.D.N.Y. 2-16-2010), aff’d 448 F. App’x 95, 98 (2d Cir. 2011) (Respondent in Bank of America Corporation and Merrill Lynch & Co., Inc. v. Webadviso, FA090300 1254121(Forum May 15, 2009).

B. Trademark Owner (Plaintiff)

B(i) UDRP Personal Name (No UDRP)
Schmidheiny v. Weber, 319 F.3d 581 (3d Cir. 2003) (Person name, Transfer)

B(ii) UDRP Award Vacated (in favor of Trademark Owner)
Bulbs 4 E. Side, Inc. v. Ricks, 199 F.Supp.3d 1151 (S.D. Tex., Houston Div. August 10, 2016) (Complainant in Bulbs 4 East Side Inc., d/b/a Just Bulbs v. Fundacion Private Whois/ Gregory Ricks, D2013-1779 (WIPO January 13, 2014) (Vacated with $50,000 and attorney’s fees)).
Dealerx v. Kahlon, 2:17-cv-1444 (E.D. Cal., 2017) (Complainant in DealerX v. Gurri Kahlon,, D2017-0488 (WIPO May 4, 2017). Court held that “while the facts [Page 10] do not support a finding of bad faith in relation to defendant’s initial acquisition of the ‘roiq] domain name … [however,] defendant did demonstrate bad faith upon learning of plaintiff’s mark and attempting to improperly extract profit from plaintiff. Plaintiff has demonstrated defendant’s bad faith attempt to profit by submission of an e-mail chain between plaintiff and defendant showing defendant attempting to extract a high price from the plaintiff for purchase of the domain name.”)
Nike, Inc. v. Circle Group Internet, Inc., 318 F.Supp.2d 688 (N.D. Ill. May 21 2004) (Complainant in Nike, Inc. v. Circle Group Internet, Inc., D2002-0544 (WIPO September 10, 2002) (<>) (“Significantly, defendant has failed to produce any further evidence, documentary or testimonial, other than Mr. Halpern’s self-serving testimony, that Halpern used the phrase ‘just do it’ prior to using it on its website. Without more, the court deems Halpern’s representation insufficient to create a genuine issue of material fact regarding his use of, and defendant’s connection to, the phrase ‘just do it.’”)
Volvo Trademark Holding AB v. Volvospares, 703 F.Supp.2d 563 (E.D. Va. Apr. 1, 2010) (unreported) (Complainant in Volvo Trademark Holding AB v. Volvospares / Keith White, D2008-1860 (WIPO February 10, 2009).

B(iv) UDRP Award Confirmed (in favor of Trademark Owner)
Direct Niche, LLC v. Via Varejo S/A, 15-cv-62344 (S.D. Fla., August 10, 2017) (formerly Respondent in VIA VAREJO S/A, v. Domain Admin, D2015-1304 (WIPO October 17, 2015) [Appeal pending])
Int’l Bancorp, LLC v. Société des Bains de Mer et du Cercle des Étrangers à Monaco, 329 F.3d 359 (4th Cir., 2003) (Respondent in five UDRPs, D2000-1323, D2000-1326,D2000-1327, D2000-1328, and D2000-1315 (WIPO 2000) (Unregistered mark: “[T]he Lanham Act extends protection to marks that meet the statutory requirements for being ‘used in commerce,’ provided they also enjoy secondary meaning.” Defendants satisfied that requirement).
Texas International Property Associates v. Hoerbiger Holding AG, 624 F.Supp.2d 582 (N.D. Tex 2009) (Respondent in Hoerbiger Holding AG v. Texas International Property Associates, D2007-0943 (WIPO October 19, 2007) (“[W]hen WIPO ruled that TIPA should transfer the domain name to Hoerbiger, TIPA refused to comply, instead protracting the issue by bringing this dispute. TIPA’s claim on summary judgment that it intended to use as a surname belies the factual record herein.”)
Victoria’s Secret Stores v. Artco Equipment Co., 194 F.Supp.2d 704 (S.D. Ohio, 2002) (Complainant in Victoria’s Secret Catalogue, Inc., Victoria’s Secret Stores, Inc. and Intimate Brands, Inc. d/b/a Victoria’s Secret Beauty v. ARTCO, Inc. FA 94342 (Forum May 9, 2000) (<>)) (Plaintiff commenced action for the specific purpose of obtaining attorney’s fees and damages; the Court entered judgment awarding award atty fees in the amount of $149,781.92 and statutory damages in the amount of $50,000.00 plus interest). Limited v. Royal Bank of Scotland Group PLC and Others,[2015] EWHC 3509 (Ch) (Respondent in Bank of Scotland Plc v. GYoyo Email / Yoyo.Email Limited, D2015-1079 (WIPO August 25, 2015) (Chancery rejected for lack of subject matter jurisdiction).

B(v) Paragraph 4(k) invoked to interfere with transfer of domain name (Transfer enjoined)
Continental Airlines, Inc. v., 390 F. Supp. 501 (E.D. Va. 2005) (Complainant in Continental Airlines, Inc. v. Mindal Park, FA0403000250002 (Forum June 18, 2004) (Respondent commenced proceeding in South Korea under Paragraph 4(k) of the Policy to interfere with the transfer of the domain names. District Court ordered VeriSign, Inc., as registry of the domain names in issue to change the registrars of record for the domain names to a registrar or registrars located in this country, so plaintiff may thereafter register the domain names in its own name.)

Ezquest, Inc. V. Baorui, 2:12-cv-730 (D. Utah, Central Division) (Complainant in EZQUEST, INC. v. BAORUI, FA1205001445631 (Forum July 12, 2012) (Chinese defendant attempting a Paragraph 4(k) filing in China to frustrate transfer. Injunction preventing registry from transferring domain names to a foreign registrar).

C. U.S. ACPA Decisions (Direct Statutory Actions) (See also below under U.S.)

C(i) Trademark Owner Prevailed
Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir., 2004) (Defendant contended First Amendment rights; enjoined from using the infringing domain names).
DSPT International v. Nahum, 624 F.3d 1213 (9th Cir. 2010) (The Court held that “[e]ven if a domain name was put up innocently and used properly for years, a person is liable under 15 U.S.C. §1125(d) if he subsequently uses the domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom.”)
GOPETS Ltd. v. Hise, Digital Overture, Inc., 657 F.3d 1024, 1032 (9th Cir. 2011) (Complainant in GoPets Ltd. v. Edward Hise, D2006- 0636 (WIPO July 26, 2006) (Court held that “Nothing in the text or structure of the statute indicates that Congress intended that rights in domain names should be inalienable.”)
Newport News Holdings Corporation v. Virtual City Vision, Incorporated, d/b/a Van James Bond Tran, 650 F3d 423 (4th Cir. 2011), cert. denied, 132 S.Ct. 575, 181 L.Ed.2d 425 (2011) (Complainant in Newport News, Inc. V. Vcv Internet, AF-0238 (eResolution July 18, 2000 but this is a later action not a 4(k) contesting the earlier award) (Plaintiff’s judgment together with damages in the amount of $80,000: “[T]he district court found that damages at the high end of the statutory range were proper because VCV’s conduct was ‘exceptional and egregious.’”)
Nguyen v. Biondo, 11-cv-81156 (S.D. Fla.) (District Court awarded damages in the amount of $850,000 plus another significant amount for attorney’s fees and costs for trademark infringement and cybersquatting (aff’d 508 F. App’x 932 unpublished decision (11th Cir. 2013).

C(ii) Registrant Prevailed
Koch Industries, Inc. v. John Does, 1-25, 10CV1275DAK (District of Utah, Central Div. 9 May 2011) (Political speech; complaint dismissed). Also, Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003) (Dissolve injunction “Mishkoff’s use was not ‘in connection with the sale or advertising of goods or services,’ and there is no likelihood of confusion among consumers.”)
Kremen v. Cohen, 337 F.3d 1024, 1030 (9th Cir. 2003) (“Registering a domain name is like staking a claim to a plot of land at the title office.”)
Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 809 (6th Cir. 2004) ((consumer complaining about nursery’s work was not liable under ACPA).
Mayflower Transit, L.L.C. v. Prince, 314 F.Supp.2d 362 (D.N.J. 2004) (Registrant’s motive was to express dissatisfaction in doing business with the mark’s owner).
Mattel, Inc. v., 310 F.3d 293 (2nd Cir. 2002)
Philbrick v. Enom, 593 F.Supp.2d 352, 375 (D. New Hampshire, 2009) (“Because the plaintiffs’ mark is not distinctive (or famous), it is simply not entitled to protection under the ACPA.”)
Randazza v. Cox, 920 F.Supp.2d 1151 (D. Nevada, 2013) (granting temporary injunction and ordering the domain names transferred to plaintiff). See also Marc J. Randazza v. Reverend Crystal Cox, Eliot Bernstein, D2012-1525 (WIPO November 30, 2012).
Tropic Ocean Airways, Inc. v. Floyd, 14-12424 (11th Cir., 2014) (“While using the name on the website may constitute advertising, Tropic failed to allege the nature and extent of advertising and promotion or its efforts to promote a conscious connection in the public’s mind.”)
Utah Lighthouse Ministry v. Fund. for Apologetic Info. & Research, 527 F.3d 1045, 1058 (10th Cir. 2008), citing decisions from different circuits but parody a complete defense to bad faith registration or bad faith use. U.S. courts have identified two “quintessential example[s]” of bad faith: 1) “purchas[ing] a domain name very similar to the trademark and then offer[ing] to sell the name to the trademark owner at an extortionate price; and 2) where a defendant] intend[s] to profit by diverting customers from the website of the trademark owner to the defendant’s own website, where those consumers would purchase the defendant’s products or services instead of the trademark owner’s.”
Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 267 (4th Cir. 2001) (“Virtual Works claims it is not similar because there is a distinction between the .net and .com TLD. According to Virtual Works, Volkswagen could not have registered in October of 1996 because it is an automaker and not an Internet service provider. This claim, however, is unavailing in light of the fact that NSI stopped enforcing the .com/.net distinction over a year before Virtual Works registered The claim is also undermined by Virtual Works’ admission that at the time of registration it was aware of the potential confusion with the VW mark, and by its statement to Volkswagen that users would instinctively use the address to link to Volkswagen’s web site.”)

D. Free Speech (Critical Commentary, Parody, etc.)

D(i) UDRP Claims
Lamparello v. Falwell, 420 F.3d 309, 319-320 (4th Cir.2005) (Respondent in The Reverend Dr. Jerry L. Falwell and The Liberty Alliance v. Lamparello International., FA0310000198936 (Forum November 20, 2003) (“[U]se of another firm’s mark to capture the mark holder’s customers and profits [ ] simply does not exist when the alleged infringer establishes a gripe site that criticizes the mark holder.”)

D(ii) Non-UDRP Claims
Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir., 2004) (Defendant contended First Amendment rights; enjoined from using the infringing domain names).
Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 810 (6th Cir.2004).
TMI, Inc. v. Maxwell, 368 F.3d 433, 440 (5th Cir.2004) ([A]fter analyzing the statutory factors and ACPA’s purpose, we are convinced that TMI failed to establish that Maxwell had a bad faith intent to profit from TMI’s mark . . . the site’s purpose as a method to inform potential customers about a negative experience with the company is key.”)
Mayflower Transit, L.L.C. v. Prince, 314 F.Supp.2d 362 (D.N.J. 2004) (Registrant’s motive was to express dissatisfaction in doing business with the mark’s owner).

E. Garnishment

Office Depot, Inc. v. Zuccarini, 621 F.Supp.2d 773, 778 (N.D. Cal. 2007), aff’d 596 F.3d 696 (9th Cir. 2010) (“[D]omain name[s] [are] subject to receivership in the district of domain name registrar.”)
Sprinkler Warehouse, Inc. v. Systematic Rain, Inc., 859 N.W.2d 527 (Minn.App. 2-2-2015) (Garnishable).
Network Solutions v. Umbro International, Inc., 529 S.E. 80, 86-87 (Va. 2000), citing Dorer v Arel, 60 F. Supp. 2d 558 (E.D. Va 1999) (Pre-UDRP) (Not garnishable, 4th Circuit).

F. Settlements

(Parties settle disputes for a variety of reasons including business decisions based on the cost, time, and effort litigating the merits of their claims and defenses. Settlements do not add to the jurisprudence but parties to claims under the Anticybersquatting Consumer Protection Act are particularly challenged because of the financial consequences for cybersquatting and trademark overreaching. It is not unlikely that ACPA settlements represent strategic withdrawals when parties realize their position exposes them to attorney’s fees and damages up to $100,000 for each domain name).

Domain Asset Holdings, LLC. v. Blue Ridge Fiberboard, Inc., 2:16-cv-00520 (W.D. Washington July 15, 2016) (Respondent in Blue Ridge Fiberboard, Inc. v. Domain Administrator / Domain Asset Holdings, LLC, FA1602001661150 (Forum March 29, 2016) (<soundstop>. Stipulation for Dismissal of Action. Jurisdiction retained for the purpose of enforcing parties’ settlement agreement).
Telepathy, Inc, Development Services v. Corporacion Empresarial Altra S.L., 1:17-cv-01030 (D. District of Columbia, November 28, 2017) (Respondent in Corporacion Empresarial Altra S.L. v. Development Services, Telepathy, Inc., D2017-0178 (WIPO May 15, 2017) (<>. The Panel denied the complaint but rejected sanctioning Complainant. Respondent thereupon commenced an action under the ACPA for reverse domain name damages and defendant settled by stipulating to pay plaintiff $40,000 dollars).
Telepathy, Inc. v. SDT International SA-NV, 14-cv-01912 (D. Columbia July 9, 2015) (Respondent in SDT International SA-NV v. Telepathy, Inc., D2014-1870 (WIPO January 13, 2015) (Parties agreed to a Consent Judgment in which Defendant agreed to pay Plaintiff $50,000 together with a permanent injunction.), LLC. v. Wills, 14-cv-00946 (D.Colorado July 21, 2015) (Respondent in Austin Pain Associates v. Jeffrey Reberry, FA1312001536356 (Forum March 18, 2014) (“Plaintiff did not register or use <> domain name in bad faith and had no bad faith intent to profit from the domain name.” Parties agreed to a consent judgment in which Defendant agreed to pay plaintiff $25,000).

Mrs. Jello, LLC v. Camilla Australia Pty Ltd. 15-cv-08753 (D. NJ 8/1/2016) (Respondent in Camilla Australia Pty Ltd v. Domain Admin, Mrs Jello, LLC., D2015-1593 (WIPO November 30, 2015) (Discontinuance with prejudice; domain name remains with Plaintiff).
S.H., INC. v. The Law Society, United Kingdom, CV10-0248 (W.D. Washington, at Seattle July 15, 2010) (Respondent in The Law Society v. S.H. INC., D2009-1520 (WIPO January 22, 2010) (“Plaintiff and its principal Daniel Cox are hereby enjoined and restrained from filing for, acquiring, renewing, maintaining or using any other domain name or trademark that incorporates the LAW SOCIETY trademark or any phonetic or typographical variant thereof.”)

G. Other Jurisdictions

1. Australia
Global Access c/o domain admin v. EducationDynamics, LLC, [2009] QSC 373 (Respondent in EducationDynamics, LLC v. Global Access c/o domain admin, FA0905001265489 (Forum July 22, 2009) (Transferred. Court has subject matter jurisdiction but granted motion to deposit security and Plaintiff discontinued the action).
2. Canada
Black v. Molson Canada (2002), 60 O.R. (3d) 457 (Ont. S.C.J.); Boaden Catering Limited v. Real Food for Real Kinds Inc., 2016 CarswellOnt 10560, 2016 ONSC 4098, 268 A.C.W.S. (3d) 688, aff’d 2017 CarswellOnt 4247, 2017 ONCA 248. (Canadian courts have subject matter jurisdiction; cf.: with India, U.K. and U.S.)
Source Media Group Corp. V. Black Press Group Ltd. And Lisa Farquharson, 2014 FC 1014 (Oct. 24, 2014)
3. France
Muhsin E.Thiebaut, Walid Victor v. Teamreager AB, Paris Court of Appeal (November 8, 2016) Respondent in Teamreager AB contre Muhsin E.Thiebaut, Walid Victor, D2013-0835 (WIPO July 29, 2013) (<>. Declaration in favor of Respondent and domain name returned). Discussion of the Paris Court of Appeal at
4. Germany
Deference rejected by The Regional Court in Cologne in a case reversing the award in XM Satellite Radio Inc. v. Michael Bakker, FA0612000861120 (Forum February 27, 2007): “In court proceedings under Paragraph 4(k) UDRP the national court shall only apply the relevant national law (e.g. trademark or unfair competition law). Whether the requirements stipulated by Paragraph 4(a) UDRP (on which the NAF Panel had based its decision) are satisfied or not is considered irrelevant.” (Case no. 33 O 45/08, 16 June 2009, translation
5. India
Satyam Infoway Ltd. vs Sifynet Solutions Pvt. Ltd., AIR 2004 SC 3540, 2004 (3) AWC 2366 SC (Supreme Ct of India, 6 May, 2004): “A domain name is easy to remember and use, and is chosen as an instrument of commercial enterprise not only because it facilitates the ability of consumers to navigate the Internet to find websites they are looking for, but also at the same time, serves to identify and distinguish the business itself, or its goods or services, and to specify its corresponding online Internet location. Consequently a domain name as an address must, of necessity, be peculiar and unique and where a domain name is used in connection with a business, the value of maintaining an exclusive identity becomes critical.”
6. UK
O.G. Ltd. v. Allan [2007] 1 A.C. 1 (H.L.) (Lord Hoffmann for the majority observed at para. 101: “I have no difficulty with the proposition that a domain name may be intangible property, like a copyright or trademark.”
Patel v. Allos Therapeutics, Inc., [2008] EWHC 1730 (Ch) (Sonia Proudman QC) (Respondent in Allos Therapeutics, Inc. v. Kumar Patel, D2007-0521 (WIPO June 11, 2007) (UDRP Award confirmed).
Toth v. Emirates and Nominet, [2-12] EWHC 517 (Ch) (Mr. Justice Mann) in which the Court concluded that there is “[n]o room for parallel (or consecutive) court proceedings [for Nominet arbitrated .uk disutes]” (53). v. Royal Bank of Scotland Group PLC and Others, [2015] EWHC 3509 (Ch) extended the Toth ruling to include UDRP awards. It held that “[P]roper construction of the UDRP clause 4k does not give rise to a separate cause of action in favour of the claimant [aggrieved domain name registrant].” The court further noted that “there is no practical utility in granting declaratory relief in this case because the UDRP scheme has dealt with the issue between the parties, because any declaration made by this Court could not alter the findings of the Panel and the effect of my conclusions on the application for summary judgment on the counterclaim render the claim otiose.”

7. U.S. Anticybersquatting Consumer Protection Act (APCA)
(a) Judicial review de novo under ACPA)
Dluhos v. Strasberg, 321 F.3d 365 (3rd Circ. 2003) (Respondent in CMG Worldwide, Inc. v. Eric Dluhos, FA0005000094909 (Forum October 2, 2000) (“Because the UDRP — a private covenant — cannot confer federal jurisdiction where none independently exists, the remaining question is whether the Congress has provided a cause of action to challenge its decisions. In the Anticybersquatting Consumer Protection Act, we hold that it has” (Emphasis added). See also Parisi v. Netlearning, Inc. 139 F. Supp. 2d 745 (E.D.Va. 2001) construing 9 U.S.C., §§ 1-14. (Trademark Owner in Netlearning, Inc. v. Dan Parisi, FA 95471 (Forum October 16, 2000) moved to dismiss plaintiff’s action on theory that the UDRP award was a final and binding arbitration; motion denied.)
(b) Preliminary Injunction
Super-Krete Int’l v. Sadleir, 712 F.Supp.2d 1023 (C.D. Cal. 2010) (Complainant in Super-Krete International, Inc. v. Concrete Solutions, Inc., D2008-1333 (WIPO October 14, 2008) (Court granted plaintiff preliminary injunction to prevent defendant’s sale or transfer of the domain before the court decided the merits of plaintiff’s claims).
(c) In Rem Jurisdiction
Mattel, Inc. v., 310 F.3d 293 (2nd Circ. 2002) (“[T]the ACPA’s basic in rem jurisdictional grant, contained in subsection (d)(2)(A), contemplates exclusively a judicial district within which the registrar or other domain-name authority is located. A plaintiff must initiate an in rem action by filing a complaint in that judicial district and no other.
The Heathmount A.E. Corp. v., 106 F.Supp.2d 860 (E.D. Virginia 2000) (In rem jurisdiction).
(d) U.S. Bankruptcy Court
LARRY KOENIG & ASSOC., LLC Debtor Martin A. SCHOTT, Trustee for Larry Koenig & Assoc., LLC and Larry and Nydia Koenig v. Andrea Lynn MCLEAR, Larry Koenig & Assoc., LLC and Larry and Nydia Koenig, 2004 WL 3244582 (Bkrtcy.M.D.La.) (If not disclosed petitioners risk losing unscheduled domain names in post-bankruptcy discharge proceedings to bidders for whom they have value.)

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