Internet Trademark Case Summaries
Parisi v. Netlearning Inc.
139 F. Supp. 2d 745 (E.D. Va. 2001)
A UDRP panel ordered the transfer of plaintiff’s “netlearning.com” domain name to defendant. Plaintiff filed a declaratory-judgment action under the ACPA and the Federal Declaratory Judgment Act, as well as a declaration of noninfringement under the Lanham Act. Defendant filed a motion to dismiss on the ground that plaintiff’s complaint constituted an improper motion to vacate an arbitration award. Specifically, defendant argued that plaintiff failed to assert a ground cognizable for setting aside an arbitration award under the Federal Arbitration Act (FAA), and that plaintiff’s motion was time barred under the FAA. Plaintiff countered that the FAA did not apply to UDRP proceedings. The court agreed with plaintiff, finding that “the UDRP’s unique contractual arrangement rendered the FAA’s provisions for judicial review of arbitration awards inapplicable.” First, UDRP contemplates parallel litigation as nothing in the UDRP restrains either party from filing suit before or during the administrative proceeding. Second, it would be inappropriate to compel participation in UDRP proceedings because UDRP complainants are not parties under the registration agreement and are under no obligation to avail themselves of the UDRP. Third, because UDRP remedies are narrow and specific, the court found no basis for confirming or enforcing a panel decision based on the FAA. Indeed, the UDRP not only expressly permits parallel litigation but also mandates a judicial forum for challenges to UDRP decisions. Finally, the UDRP’s contemplation of comprehensive de novo adjudication is more expansive than the FAA’s limited review of the procedural soundness of a decision.