The US Court of Appeals for the Fifth Circuit has recognised that a domain name transfer achieved though a successful action under the UDRP can be overturned under the ACPA where the evidence in the UDRP action was misleading.

In ISystems v. Spark Networks, the plaintiff sought to overturn a UDRP decision in which its domain name jdate.net was transferred to the defendant, the owner of the JDATE trademark and the domain name jdate.com. The plaintiff relied on 15 U.S.C. § 1114(2)(D)(iv), which provides that if a registry transfers a domain name “based on a knowing and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of a mark”, that other person is liable for damages and injunctive relief, including retransfer of the domain name to the original domain name registrant, is available.

The plaintiff claimed that the defendant’s evidence in the UDRP action had been deceptively edited so as to falsely represent that the plaintiff’s use of the domain name was commercial.  The Court of Appeals found that such editing had occurred, and that it amounted to a material misrepresentation that had influenced the decision of the UDRP arbitrator. It therefore remanded the case to the District Court to proceed on the plaintiff’s § 1114(2)(D)(iv) claim.