There is no post domain dispute “appeal” right in the UK after the Air Emirates decision. Although that case dealt with a post DRS .co.uk domain, the reasoning applies to the UDRP just as well (regardless of what I might think of the judge’s logic).
This is a continuing issue for UDRP purposes. The language as written simply presumed that a post UDRP claim of sorts existed “just like in the US”. This is hardly the case.
It is for this reason that I long ago reversed my original advise to clients regarding where to register. I advise registering all valuable domains with a US registrar. This serves several purposes:
1. It gives them the ability to file post-UDRP under the ACPA
2. It gives them a virtual slam dunk on any claim involving a non-use registered trademark
3. It gives them the ability to challenge the distinctive nature of the underlying trademark
4. It gives them the ability to seek damages
5. They can still opt NOT to pursue the claim if they are concerned about a possible counterclaim.
I continue to cringe on ICANN Working Group calls whenever I hear US attorneys speak up. They repeatedly fail to understand that the real world is not like “their” world.
PRK
FYI, here's a just published WIPO UDRP decision in which the UK's taxing authority successfully recovered two domains.
While the respondent resided in the UK and thus any "appeal" would have been to a UK court (presuming that the registrars were similarly situated) this filing still involved acceptance of the mutual jurisdiction clause by a sovereign
entity.
Philip S. Corwin, Founding Principal
Virtualaw LLC
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Begin forwarded message:
From: Phil Corwin <
psc@vlaw-dc.com>
Date: May 3, 2017 at 2:18:33 PM EDT
To: Phil Corwin <
psc@vlaw-dc.com>
Subject: HMRC recover two domain names using their trademark