In The Last Of A Trio Of Cases Already In Federal Court, A UDRP Panel Finally Refuses To Rule

In the last couple of weeks we have cited two UDRP cases in which they domain holder had already filed a federal court action for declaratory judgement and the UDRP panel decided the case anyway.

Today a UDRP panel finally did the right thing and passed on ruling on the UDRP based on the pending federal court case in a UDRP on the domain name

The previous two cases involved the domain name, which ruled in favor of the “trademark holder” despite a federal lawsuit, while  the second case involved the domain name in which the panel ruled against the trademark holder despite a pending federal court case.

In all three cases the domain holder was represented by Mike Rodenbaugh of Rodenbaugh Law.

So three different cases involving three different domain holders and three different trademark holders.

Three different results.

This is an area where UDRP reform is desperately needed.

There should be a hard and fast rule that a UDRP should not be heard while a federal lawsuit is pending on the same domain until the federal court case is decided.

Here are the relevant facts and finding of the one member panel:

“On June 5, 2012 the Respondent filed Civil Action No. 4:12-CV-335 against the Complainant in the US District Court for the Eastern District of Texas.  In its “Original Complaint and Demand for Jury Trial” the Respondent (as Plaintiff) seeks:
“A declaratory judgment that the Respondent’s registration and use of the Disputed Domain Name does not constitute trade mark infringement, dilution, unfair competition, or a violation of the Anti-Cybersquatting Protection Act;
“A declaratory judgment that the Respondent is the rightful registered name holder or registrant of the Disputed Domain Name;”

to bar the transfer of the Disputed Domain Name to the Complainant; and relief for the Complainant’s bad faith actions constituting common law unfair competition. ”

“On June 6, 2012 the Respondent filed with the Center a document titled “Notice of Civil Action and Request for Dismissal Without Prejudice or in the Alternative, Stay of Administrative Proceedings”.  In the event that the Panel finds that dismissal or a stay is not appropriate, the Respondent has requested an additional 10 days from the date of the Panel’s determination to respond to the Complaint.”

“The Panel has reviewed the “Original Complaint and Demand for Jury Trial” filed by the Respondent (as Plaintiff) on June 5, 2012.  Ownership of the Disputed Domain Name and the circumstances of its registration by the Respondent, are clearly the issues to be determined by the Court in the Eastern District of Texas court proceedings. ”

“However, the Eastern District of Texas court proceedings have only recently been filed, and there is no evidence before the Panel that the court papers have been served on the Complainant, or that Eastern District of Texas has jurisdiction over this issue.”

“In light of the above, the Panel is of the opinion that the Complaint cannot be evaluated separately from the referred-to Court proceedings. ”

“On that basis, the Panel exercises its discretion to terminate the UDRP proceeding pending resolution or discontinuation of the referred-to Court proceedings, without prejudice to the Complainant’s future rights to file again under the Policy, following such resolution or discontinuation of the referred-to Court proceedings”

“The Panel orders that the UDRP proceeding be terminated pending resolution or discontinuation of Civil Action No. 4:12-CV-335, without prejudice to the Complainant’s future rights to file again under the Policy.”

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