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Kudos to this UDRP panelist for giving it thought

Panelist considers omissions in complaint, including mention that trademark filing is for a design mark.

I’m amazed at how many UDRP panelists don’t examine the complainant’s statements and take everything at face value.

So kudos to World Intellectual Property Organization panelist Wolter Wefers Bettink, who just decided for the respondent in a case over myswisschoclate.com.

The panelist called the complainant out for not providing relevant facts. It’s worth reading his comments verbatim:

Initially, this seemed to this Panel to be a simple and straightforward case of abusive domain name registration, the Respondent having registered the Domain Name well after the registration of the Trademarks, redirecting it to its own website under a different domain name, where it sells competing products and not having responded to letters of summons from Complainant, nor having filed a response and apparently having another, similar domain name transferred to a third party after receiving a letter of summons from Complainant.

Upon scrutiny of the evidence submitted by Complainant, the case became less clear. First, Complainant in the Complaint did not mention that the Trademarks are design marks, consisting of a brown background, with a design consisting of the words “my swiss chocolate ch” in different font sizes, next to a square design (seemingly part of a chocolate tablet), a small white cross (somewhat similar to the one appearing in the Swiss national flag), with a swirl encircling the design and looping around as an underline for the word “chocolate”.

Second, Complainant failed to disclose in the Complaint that the U.S. registration was granted with the disclaimer “No claim is made to the exclusive right to use ‘Swiss chocolate.ch’, apart from the mark as shown”.

Third, Complainant asserts in the Complaint that it has a Community trademark, but provides only an international trademark registration designating the European Union. Therefore, there is no evidence that Complainant is the owner of a Community trademark to “my swiss chocolate.ch”.

Both facts are extremely relevant, both for the finding whether the Domain Name and the Trademarks are confusingly similar and for the findings in relation to rights or legitimate interests and registration and use in bad faith.

In the view of this Panel, deliberately omitting essential facts from the Complaint does not help the case of a Complainant, since it raises the suspicion that the Complainant is trying to “cover up” facts which are unfavorable to its case. Such behavior may in itself be sufficient for a panel to deny the Complaint. After all, when filing a Complaint, the Complainant has to subscribe to the following clause which is part of the model Complaint: “The Complainant certifies that the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”

Furthermore, Panelists have to do their work in a limited timeframe where, especially in a case like this one where no response is filed, they have to rely on the statements in the Complaint and the evidence provided by Complainant. If Complainant tries to mislead the Panelist as to essential facts, he cannot expect the Panel to decide in his favor.

In the end, he decides that it wasn’t a deliberate attempt to mislead the panel. But his through process — and that he took time to think about the case — should be commended.

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  1. SL

    Agreed, whether the respondent won or lost, the work by Mr. Wolter Wefers was very professional and should be commended. When a complainant’s attorney deliberately leaves out facts it’s impossible for the UDRP process to work fairly.

    As stated in the complaint, the firm representing the complainant was Bernasconi & Bernasconi of Switzerland.

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