Vanity.com, Inc. v. Vanity Shop of Grand Forks, Inc.

Filing 28

ORDER RE: HEARING ON DEFENDANT'S MOTION TO DISMISS (Illston, Susan) (Filed on 9/10/2012)

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IN THE UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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VANITY.COM, INC.,

No. C 12-02912 SI

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Plaintiff,

ORDER RE: HEARING ON
DEFENDANT’S MOTION TO DISMISS

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United States District Court
For the Northern District of California

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v.
VANITY SHOP OF GRAND FORKS, INC.,
Defendant.

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On May 10, 2012, defendant Vanity Shop filed a complaint with the National Arbitration Forum

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(“NAF”) in accordance with Section 4(a) of the Uniform Domain Name Dispute Resolution Policy

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(“UDRP”), alleging plaintiff Vanity.com misused its domain name. Dkt. 22-2. On June 5, 2012, before

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the NAF issued its decision, plaintiff Vanity.com filed a similar complaint with this Court, seeking inter

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alia, declaratory judgment on similar misuse claims against Vanity Shop. Dkt. 22-4. On June 20, 2012,

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the NAF granted judgment for Vanity Shop and ordered Vanity.com to transfer the disputed domain

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name to Vanity Shop. Dkt. 22-5. On August 2, 2012, defendant Vanity Shop filed a motion to dismiss

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for lack of personal jurisdiction or alternatively to transfer venue with this Court.

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Both plaintiff and defendant registered their domain names with GoDaddy.com, LLC, the largest

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registrar with the Internet Corporation for Assigned Names and Numbers (“ICANN”). Dkt. 22-1, 22-6.

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All ICANN registrants must comply with the UDRP, a private contract between the parties that outlines

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domain name dispute procedures, and which appears to address Vanity.com’s decision to pursue legal

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action in this Court prior to adjudication of its claims by the NAF: “[t]he mandatory administrative

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proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from

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submitting the dispute to a court of competent jurisdiction for independent resolution before such

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mandatory administrative proceeding is commenced or after such proceeding is concluded.” UDRP

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4(k), Dkt. 22-2, 22-6 (emphasis added). Plaintiff Vanity.com filed this action with this Court during

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the NAF administrative proceeding, not “before” or “after” that proceeding, as the UDRP seems to

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require.

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Because of its apparent relevance to the disposition of defendant’s pending motions, the Court

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directs each party to be prepared to discuss the effect of UDRP Section 4(k) on this Court’s jurisdiction

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and on transfer of venue at the hearing currently scheduled on defendant’s motions on Friday,

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September 21, 2012, at 9:00 a.m.

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United States District Court
For the Northern District of California

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IT IS SO ORDERED.

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Dated: September 10, 2012
SUSAN ILLSTON
United States District Judge

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