ICANN Policy Paragraph 4(k)

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4. Mandatory Administrative Proceeding.

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k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.
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Notes

In one of the (fairly rare) court proceedings under this Paragraph 4(k) UDRP the Regional Court in Cologne had to decide on the domain name xm.com, for which a NAF Panel had ordered a transfer to the Complainant (XM Satellite Radio Inc. v. Michael Bakker, NAF Claim Number: FA0612000861120 – xm.com). The German court held (decision of 16 June 2009, case no. 33 O 45/08):

  • 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.
  • As the (US based) Complainant did not have any trademark rights for “XM” in Germany (where both the Respondent and the Registrar were located) the court rejected any claims under applicable trademark law.
  • Based on the specific circumstances of the case the court also rejected unfair competition claims or other claims based on (German) tort law, mainly because the Complainant had successfully used its domain name xmradio.com for many years and therefore did not “need” the disputed domain name xm.com.
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