Internet

• Author: International Law Group

This case raises an important issue of first impression, namely, whether a domain name registrant who lost in a World Intellectual Property Organization (WIPO) proceeding pursuant to its Uniform Domain Name Dispute Resolution Policy (UDRP) may challenge this result in federal court. Under 15 U.S.C. Section 1114(2)(D)(v) of the U. S.'s Anticybersquatting Consumer Protection Act (ACPA), it is provided in part that "A domain name registrant ... may ... file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful ...". Obtaining a judicial declaration that plaintiff did not violate the ACPA and getting an injunction forcing a transfer of the disputed domain name back to him, would seemingly overturn the result of the earlier WIPO proceeding.

[Editorial Note: "Cybersquatting" or "cyberpiracy" or "domain name hijacking" denotes a practice whereby someone buys a particular domain name with the intention of selling it to the trademark holder for profit.]

In August of 1998, one Jay Sallen registered a primary Internet domain name with Network Solutions, Inc. ("NSI") under the name "corinthians.com." In addition to being having a New Testament context, "Corinthiao" happens to be the name of a popular and successful soccer franchise in Brazil. One year later, Sallen contacted agents of Corinthians Licenciamentos LTDA ("CL") of Brazil, the exclusive licensee of Corinthians' intellectual property. According to Sallen, a number of Brazilians had gotten in touch with him more than once about buying corinthians.com. He had decided, however, that it would be in CL's best interest to own the domain name. CL responded with a "cease and desist" letter. At some point, Sallen posted biblical material on the corinthians.com website. CL alleges that Sallen had posted this material after he had gotten the "cease and desist" letter. On the other hand, Sallen claims that he had posted this material before any dispute arose over the domain name.

By default, Sallen's registration agreement is subject to the UDRP. Moreover, the UDRP only applies to allegations advanced by a third- party trademark holder that the registrant of the domain name in question has engaged in "cybersquatting" activity. To decide this controversy, the registrant and the third party submit to an administrative dispute resolution service provider which the Internet Corporation for Assigned Names and Numbers ("ICANN") has authorized to decide...