Both complainant and respondent have registered trademarks, so panelist determines UDRP not appropriate mechanism to decide case.
WIPO panelist Torsten Bettinger has denied (pdf) a complaint filed against the domain names YahClick.com/.net and YahLive.com/.net. In doing so, Bettinger appreciated the limits of UDRP cases while noting that the respondent’s story was “highly improbable”.
The case was field by Al Yah Satellite Communications Company and affiliated companies against eMedia Development, which is owned by John Pepin.
The complainant provided a press released dated October 2008 announcing the launch of its YahClick broadband service. YahClick.com and .net were registered on the same day as the press release. The complainant says it started promoting Yahlive in April 2009, shortly before Yahlive.net and Yahlive.co.uk were registered and shortly before the respondent bought Yahlive.com on Sedo.
What made this case challenging for the panelist is that Pepin registered trademarks in the United Kingdom for both Yahclick and Yahlive. So in this case both the complainant and the respondent have registered marks — just in different jurisdictions.
In rendering the decision in favor of Pepin, Bettinger noted that the UDRP has its limits:
The UDRP was designed as a fast, efficient mechanism for the resolution of clear-cut cases of cybersquatting. It operates on the basis of an abbreviated record, affords no opportunity for discovery or in-person pleadings, and is conducted on a comparatively rapid schedule. UDRP panels are, therefore, not capable of deciding disputes which involve a “weighing” of respective trademark rights. Nor are they competent to “look behind” a trademark granted by a national authority to question or re-assess its validity.
The Respondent’s explanation of his motives in this case is, in the Panel’s view, highly improbable, particularly with regard to the timing of his registration of the disputed domain names in light of the Complainants’ press releases…
Bettinger continued:
Despite the Panel’s misgivings about the sincerity of the Respondent’s motives and allegations, the UDRP was not designed to resolve such complicated questions of fact and law.
The complex issues raised by this case should properly be addressed by a court of competent jurisdiction, and accordingly, the Complaint must be dismissed.
John UK says
I filed the Response to this Complaint and would like to add this narrative to correct the tone of the Decision Summary that has been given. The Complainants (3 companies) acting by Allen & Overy firstly sent to me a Complaint and 23 exhibits. They at same time filed that with WIPO. I pointed out that Emedia Development was the correct respondent for all 4 domains and NOT “Whois Privacy” who had been named for 2 of the domains . WIPO asked Complainants to correct that and Allen & Overy then took it upon themselves to not only change the Respondent names but to change the whole complaint (for various reasons I wont go into) They thus then filed a “Revised Complaint” and 23 x “Revised Exhibits” all numbered and annexed as “Revised Exhibits”.
WIPO then sent the Respondent these 2 complaints and 46 total exhibits. The trouble is that in the “Revised Complaint” they did NOT refer to the “Revised Exhibits” but to the original Exhibits and since those had changed it was all out of sequence. Ridiculous and made it a nightmare. This was not the end of it. The Respondent then filed a Response and emails this as they should do. Because a couple of exhibits had not been scanned properly the Respondent sent WIPO a complete paper bundle & index which I stated the Panelist could use if he wished. That was it.
THEN having received the Response within 3 days or so Allen & Overy sent to WIPO & Respondent a 10 pages supplemental filing with more exhibits ! The Respondent was not asked to respond to that filing.
I would believe that Mr Torsten Bettinger must have been overwhelmed with papers since the Complainant had filed massive amount of papers and that might be why the decision was not filed at WIPO on 25th May deadline but instead on 21st June. That is not his fault but clearly it is very hard to deal with the amount of papers in that time.
The Summary misses out 3 crucial points of evidence that the Respondent filed;
1. The decision refers to the “Tiara” Hotels case, but fails to mention at all the German Appeals Court Judgment that the Respondent filed that set aside that UDRP decision and Ordered that the domain “Essque.com” remain with John Pepin . That should have been included in the Decision Summary IMHO.
2. Allen & Overy filed a contention in the
complaint that the 3rd Complainant ,Al Maisan, had rights in one of the two names because they alleged they had carried out various acts of promotions of that name in around APRIL 2009. The Respondent carried out a search of Abu Dhabi Companies and obtained a Registration copy that showed Al Maisan had only been formed as a Company in AUGUST 2010 (18 months after the date of alleged use of name) and had 1 (one) employee.
3. Allen & Overy filed various Without Prejudice documents between a TM Attorney (John Wallace | Partner Boult Wade Tennant)
in a UDRP exhibit BUT failed to exhibit
some of the communications ,including a 2 page Letter from John Wallace to the Respondent in which the Complainants offered to compromise the trade mark application in order not to breach the Respondent’s existing 3 year trade mark. Clearly Allen & Overy wanted only to show material that helped them and this letter did not show they left it out.
Anyway the result was correct but the Summary is not fair to the Respondent who at all times acted on bona fide basis.
Andrew Allemann says
John, the panelist seems to blame you for the delay:
John UK says
@Andrew. Yes indeed, and that is grossly unfair and am currently looking at and mulling what can be done legally to have that corrected. In particular I am looking at where, if at all, Registrants undertake to allow WIPO to publish decisions. Of course I am happy with the fact complaint was ,rightly, denied, but on other hand he also laid in to me in the Summary . Whose fault was the Excess material. To be fair I would say 65-70% Complainants and 35 to 30% respondent, yet the impression given is 100% mine.
Andrew Allemann says
ICANN requires the decision to be posted publicly.
John UK says
As regards the Paper Copy. I sent the complete Response by email as required, and seperately 2 days later by Express Mail sent 1 A4 bundle properly indexed etc with letter saying ” I am sending this paper copy simply to try and make the Panelists job easier and he may of course disregard if they wish”. He clearly had sooooo much paperwork he was stressed out !!!
John UK says
@Andrew Noted, but I wonder if Registrant agrees to that by agreeing to be bound by UDRP ?. May be academic but would be good to know anyway.
Andrew Allemann says
I think so – you agree to the UDRP as a domain registrant, and the requirement to publish is part of the UDRP Rules.
John UK says
“….first by challenging the Center’s authority to hear the case and the applicability of paragraph 20 of the Rules, and then via a series of ungrounded requests for additional time to file the Response, demands that the Center re-notify the Complaint, and challenges to the…..” THIS was done by a Solicitor who initially was going to act for the Respondent .
Dave Z says
That’s part of the registrar’s contract you agreed to the moment you registered a domain name with them.
John Berryhill says
“Of course I am happy with the fact complaint was ,rightly, denied, but on other hand he also laid in to me in the Summary”
That’s normal. Some WIPO panelists believe it is good practice to make disparaging comments against the party for whom they are ruling, as an emotional “consolation prize” for the loser. As one UDRP panelist put it to me, “The most dangerous person in the room is the party you are going to rule against.”
In contested cases, the decisions are often written to make it appear as if the prevailing party “just barely” cleared the bar, for that reason. It’s a way of appearing to be fairminded, when there was really no contest.
You can see this in action every day. The UDRP requires the complainant to win on three independent elements. The structure of a complaint denial is most often:
1. The domain is similar to a trademark.
2. We take no position on legitimate rights, because….
3. There was no bad faith.
What is fascinating about the “we take no position on legitimate rights” is that, if there was no bad faith, then the panel doesn’t need to take a position on whether the domain is similar to the trademark either. But they do it nearly every time in “domainer” cases, because they feel the need to throw the complainant a bone. Logically, there is no reason to do so.
Conversely, if the panel finds the complainant has failed the first element, they will ordinarily comment on the other two, stating it is unnecessary to do so. But they virtually never fail to rule in the complainant’s favor on the first element, on their way to finding against the complainant on the third element.
John Berryhill says
oops – “will ordinarily NOT comment on the other two”
John UK says
@JohnB thanks and noted. Forgive my sounding off sometime ago, under pressure as usual probably and not really thinking straight, JP.
John UK says
Just a word of warning to others. There is a company is existence called “Farncombe International” whose details I will add below. From a search ,they clearly do a lot of the domain/UDRP type work for solicitors in UK to try and build a case from nothing , and they apparently make approaches by telephone and email .Be very careful who you actually are dealing with as they might not be who they appear.
Farncombe International Ltd
53 Broadwater Street West
Worthing, W SUSSEX
BN14 9BY, United Kingdom
Jeffrey Morris Katz
whose parent company is;
Bishop International Ltd
14 Waterloo Place
London, SW1Y 4AR,
United Kingdom