NBC Universal v. NBCUniversal.com

Citation: NBC Universal, Inc. v. NBCUniversal.com, 378 F.Supp.2d 715, 76 U.S.P.Q.2d (BNA) 1370 (E.D. Va. 2005).

Factual Background
Junak Kwon, a Korean citizen, purchased and registered the domain name NBCUniversal.com in Korea. In the United States, NBC Universal sought to gain control of the domain name to prevent trademark dilution of its name. The two sides never came to an agreement about the domain name and NBC Universal submitted the dispute to a WIPO arbitral panel. The panel ruled in favor of NBC Universal, finding that Kwon registered the domain name in bad faith.

Kwon appealed the panel decision in a Korean court. The Korean court ruled in favor of Kwon, overturning the WIPO panel’s decision. NBC filed a separate suit in the United States.

Trial Court Proceedings
NBC Universal sued Kwon for a violation of the Anti-cybersquatting Consumer Protection Act (ACPA) and for trademark dilution under the Lanham Act. Kwon filed a motion to dismiss, arguing that the Uniform Dispute Resolution Policy (UDRP) prevented the federal court from having jurisdiction over the dispute, and even if proper jurisdiction were found, the court should abstain from ruling on the controversy because of the principle of res judicata.

In response to Kwon’s motion for summary judgment, federal District Judge Leonie Brinkema found that the UDRP did not preclude the court from hearing the case. The UDRP simply recommends that a court should give deference to an arbitral decision.

Judge Brinkema also held that the principle of res judicata did not apply to this case, because the action in Korea was an “in personam” action, while NBC Universal’s suit was an “in rem” action. In addition, Judge Brinkema noted that U.S. trademark laws protect important public policies and therefore the court had a “strong interest” in the resolution of these issues.

Accordingly, Judge Brinkema denied Kwon’s motion to dismiss.