FORUM Decision Is Admissible in Litigation over Disputed Domain Name

The Western District of Washington ruled that a decision issued by the National Arbitration Forum (FORUM) in a domain name dispute is admissible in a subsequent court proceeding involving the same parties.

In Compana, LLC v. Aetna, Inc., No. C05-0277RSL, 2006 WL 1319456 (W.D. Wash. May 12, 2006), Compana brought suit seeking a declaration that it is entitled to use the domain name “docfind.com.” Aetna responded with several counterclaims arising from Compana’s earlier registration and use of that domain name.

Aetna had previously challenged Compana’s use of the domain name by initiating mandatory administrative proceedings pursuant to the rules promulgated by the International Corporation for the Assignment of Names and Numbers (ICANN). In those proceedings, the FORUM issued a decision (the docfind decision) finding that the domain name “docfind.com” infringed on Aetna’s mark and that Compana had registered the name in bad faith.

In other instances, both before and after the docfind decision, the FORUM and the World Intellectual Property Organization (WIPO) issued decisions adverse to Compana’s use of disputed domain names.

Moving for exclusion of the FORUM and WIPO decisions, Compana argued that the decisions were irrelevant under Rule 404(b) of the Federal Rules of Evidence, which provides that evidence of prior bad acts “ is not admissible to prove the character of a person in order to show action in conformity therewith.”

The Court ruled that the docfind decision was relevant in providing factual context and that decisions issued before the docfind decision were relevant in showing that Compana had knowledge of the applicable law and that its business model had evolved over time. Since the docfind decision ended Compana’s use of the “docfind.com” domain name, the Court ruled that decisions issued after the docfind decision were not relevant to Aetna’s counterclaims.