Longest-ever UDRP case resolved in Stanley's favour
The longest pending Uniform Domain Name Dispute Resolution Policy (UDRP) case has finally come to a close, with panellist Charles K McCotter ordering the transfer of four domain names to The Stanley Works. The case took nearly two-and-a-half years to be decided, a record time for a process that usually takes between 45 and 60 days.
Stanley, a global manufacturer and marketer of tools and household hardware, filed its UDRP complaint with the National Arbitration Forum in April 2000. The respondent was McNeil & Associates, a former Canadian distributor for Stanley and the registrant of domain names 'stanley-proto.com', 'stanley-husky.com', 'stanley-tools.com' and 'stanley-hardware.com'. (Stanley had previously won a UDRP case against Phil McNeil, the principal of McNeil & Associates.)
Subsequently, McNeil commenced an action against Stanley in the US District Court for the Northern District of California, and McCotter suspended the UDRP proceeding pending the outcome of the litigation. The district court ruled in favour of Stanley, as did the Ninth Circuit Court of Appeals. When McCotter then gave McNeil a deadline by which to respond to the UDRP complaint, McNeil claimed that if he were to appeal to the US Supreme Court or amend his answer in a separate Canadian case and the issues were resolved by either court, no UDRP case would be necessary.
McCotter allowed the stay on the UDRP proceedings to continue until the last day by which McNeil could appeal to the US Supreme Court. When McNeil failed to file for appeal, the stay was lifted and the case was finally resolved three weeks later when McCotter ordered the transfer of the four domain names.
The fact that this case took so long to be resolved demonstrates that just like litigation, UDRP cases can sometimes require additional time for a decision to be reached. Respondents that commence civil actions during UDRP proceedings may, like McNeil, delay the decision and frustrate the speedy action mandated under the UDRP.
James L Bikoff and Patrick L Jones, Silverberg, Goldman & Bikoff, Washington DC
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