## Facts

- Jay D. Sallen registered the domain name `corinthians.com` through a registrar agreement incorporating the Uniform Domain Name Dispute Resolution Policy (UDRP).
- Corinthians Licenciamentos LTDA (CL), asserting trademark rights in “Corinthians/Corinthiao” connected to a Brazilian soccer team, initiated a UDRP proceeding administered by the World Intellectual Property Organization (WIPO).
- A WIPO panel found for CL under the UDRP and ordered transfer of `corinthians.com` from Sallen to CL.
- Sallen filed a federal action seeking (1) a declaration that his registration and use of the domain name was not unlawful under the Anticybersquatting Consumer Protection Act (ACPA) and (2) injunctive relief preventing or undoing the UDRP-ordered transfer, relying on 15 U.S.C. § 1114(2)(D)(v).

## Issues

1. Whether 15 U.S.C. § 1114(2)(D)(v) supplies a federal cause of action and subject-matter jurisdiction for a registrant to challenge a domain transfer ordered under a UDRP-type policy.
2. Whether an Article III case or controversy exists when the mark owner disclaims intent to sue under the ACPA but the registrant seeks a declaration of lawful use and relief restoring the domain name.
3. Whether a registrant’s contractual assent to the UDRP limits or eliminates the ability to obtain federal judicial relief under the ACPA or binds federal courts to the UDRP outcome.

## Decision

- The First Circuit reversed the district court’s dismissal for lack of subject-matter jurisdiction and remanded.
- The court held that § 1114(2)(D)(v) creates a cause of action and supports federal-question jurisdiction for registrants whose domain names are suspended, disabled, or transferred under a covered dispute policy.
- The court held that Sallen alleged a live Article III controversy because the UDRP decision caused concrete injury (loss of the domain name) and he sought effective declaratory and injunctive relief.
- The court held that UDRP determinations are contractual and nonbinding on federal courts adjudicating rights under the Lanham Act and the ACPA.

## Legal Principles

- 15 U.S.C. § 1114(2)(D)(v) authorizes a domain-name registrant, after a UDRP-type suspension/disablement/transfer, to sue to establish that the registration or use “is not unlawful” under the Lanham Act and permits injunctive relief, including reactivation or re-transfer.
- A present deprivation of a domain name following an adverse administrative decision can satisfy Article III even if the mark owner disclaims intent to file an ACPA infringement/cybersquatting suit.
- UDRP proceedings are contractual, designed to permit later resort to courts; their outcomes do not preclude federal adjudication of Lanham Act and ACPA questions.
- Contractual incorporation of the UDRP into a registration agreement does not eliminate the statutory remedial scheme Congress created for registrants to obtain judicial relief after an adverse UDRP result.

## Conclusion

The First Circuit held that the ACPA’s registrant remedy in 15 U.S.C. § 1114(2)(D)(v) provides federal jurisdiction and a cause of action to challenge a UDRP-ordered domain transfer, that a concrete dispute exists based on the transfer itself, and that federal courts are not bound by UDRP panel determinations when deciding the lawfulness of the registrant’s conduct and appropriate relief.


Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14 (1st Cir. 2001)