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Internet Trademark Case Summaries

Mann v. AFN Investments Ltd.

2007 U.S. Dist. LEXIS 54582 (S.D. Cal. July 27, 2007)

Plaintiff Mann sued to challenge a UDRP decision that ordered him to transfer the domain name “” to defendant AVN.  Under the UDRP’s rules, the filing of this lawsuit automatically stayed the transfer of the domain name.  AVN moved to dismiss the case for lack of subject matter jurisdiction, arguing that because the domain name had not been suspended, disabled, or transferred to the registry of the court prior to Mann filing his complaint, Mann had not met the requirements of the ACPA.  Specifically, Section 1114(2)(D)(v) allows a registrant whose domain name has been suspended, disabled, or transferred to file a civil action to establish that the registration or use of the name was not lawful.  Declining to “exalt form over substance,” the court denied defendant’s motion.  The court first noted that the UDRP does not require the domain name registrar to transfer the domain name to the court if the registrant provides the registrar with official documentation that a complaint has been filed with a court with appropriate jurisdiction.  Further, the court agreed with the First, Second, and Fourth Circuits, which held that a registrant can bring an action under Section 1114(2)(D)(v) of ACPA as long as the name has been ordered to be transferred under the UDRP, even if the transfer has not yet occurred.  Thus, the court held that the ACPA grants jurisdiction in situations in which a UDRP panel has ordered the suspension, disabling, or transfer of a domain name, but which event has not occurred due to the UDRP’s automatic stay provision.