View source

<div style="color:green">

'''4. <u>Mandatory Administrative Proceeding</u>.''' 

<div style="color:black">
:(...)
</div>

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between the parties; (ii) evidence satisfactory to [[Definitions#Us|us]] that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing [[Definitions#You|your]] lawsuit or ordering that [[Definitions#You|you]] do not have the right to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

</div>

:(...)

[[ICANN Policy Paragraph 4(j)|(Previous)]] [[ICANN Policy Paragraph 4|(Up)]]

== 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 [http://www.xm.com/ xm.com], for which a NAF Panel had ordered a transfer to the Complainant ([http://domains.adrforum.com/domains/decisions/861120.htm XM Satellite Radio Inc. v. Michael Bakker, NAF Claim Number: FA0612000861120 – xm.com]). The German court held ([http://www.bettinger.de/rechtsdatenbank/domainrecht/urteile/090616-lg-koeln-33-o-4508-zweistellige-com-domain-udrp-domaingrabbing.html 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 [http://www.xmradio.com/ xmradio.com] for many years and therefore did not “need” the disputed domain name [http://www.xm.com/ xm.com].