Panel rejects case pending arbitration on VON DUTCH mark

National Arbitration Forum (NAF) panellist Charles K McCotter Jr has rejected the case of Lutton Investments Inc v Darkhorse Distribution Inc on the grounds that an arbitration proceeding in California over the ownership of the VON DUTCH trademark is pending.

Lutton Investments of Los Angeles, California filed its complaint with NAF against Darkhorse Distribution Inc of Venice, California over the latter's registration and use of the domain name ''. Darkhorse filed a timely response requesting that McCotter stay its decision in the Uniform Domain Name Dispute Resolution Policy (UDRP) case pending the result of an arbitration proceeding concerning the ownership of Von Dutch Limited LLC and the rights in the VON DUTCH trademark. The arbitration proceeding started in January 2003 with Action Dispute Resolution Services in Los Angeles County.

McCotter decided not to consider the case on the merits, stating that UDRP panels "should not rule on a decision when there is a court proceeding pending because no purpose is served by the panel rendering a decision on the merits to transfer a domain name, or have it remain, when a decision regarding the domain name will have no practical consequence".

The decision is reasonable, as it prevents a party from circumventing the legal process to obtain a result through the UDRP that may not be appropriate under previously commenced proceedings.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC

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