UDRP decisions are not entitled to extremely deferential review

In Dluhos v Strassberg, the US Court of Appeals for the Third Circuit has held that a domain name dispute first decided under the Uniform Domain Name Dispute Resolution Policy (UDRP) should be considered de novo under the Anti-cybersquatting Consumer Protection Act (ACPA) if one of the parties chooses to bring the issue to a federal court. This is because as non-binding, private covenants, UDRP proceedings do not amount to arbitration under the Federal Arbitration Act (FAA) and therefore are not entitled to extremely deferential review.

Anna Strassberg, the widow of well-known acting coach Lee Strassberg, initiated UDRP proceedings against Eric Dluhos, claiming that his registration of the domain name 'leestrassberg.com' infringed the Strassberg estate trademarks. Dluhos responded by (i) contesting the National Arbitration Forum's (NAF) jurisdiction, and (ii) challenging the constitutionality of the proceedings in federal court.

The UDRP proceedings were suspended in light of the pending federal lawsuit, but the US District Court for the District of New Jersey dismissed Dluhos's complaint on technical grounds. Consequently, the NAF panel lifted its temporary stay and issued a decision directing Dluhos to transfer 'leestrassberg.com' to the Strassberg estate. Dluhos filed an amended complaint with the federal court.

The district court dismissed Dluhos's constitutional claims and upheld the NAF decision, ordering the transfer of the disputed domain name. It reasoned that the NAF decision was entitled to an extremely deferential standard of review because UDRP proceedings fall under the umbrella of the FAA. Dluhos appealed.

The Third Circuit reversed the lower court's decision, finding that the latter had erred in reviewing the UDRP proceedings under the limitations of the FAA. The appellate court noted that:

  • Congress provided a means for parties to dispute UDRP decisions in federal court when it enacted the ACPA;

  • UDRP proceedings are non-binding, private covenants; and

  • UDRP proceedings do not independently confer federal jurisdiction.

Accordingly, the appellate court remanded the case for the district court to decide the domain name dispute issues de novo under the ACPA.

Jennifer Glombicki and Alan Dalinka, Piper Rudnick LLP, Chicago

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