The case for Yu.com was much more complicated than it should have been.
All the facts of the UDRP for Yu.com point to an slam dunk, open-and-shut victory for the respondent.
Yet getting to that determination – a win for the respondent – was apparently anything but simple.
Michael has opined a bit on the case, and I’m going to share my analysis.
First, let’s discuss how this was a dead-on-arrival case.
The complainant, Two Way NV/SA, stated that it had plans to bring to market an app with the name YU, but had not yet launched it or commenced commercialization.
Two Way had managed to get a trademark for its non-existent app, but even that was filed for and granted after the owner of Yu.com acquired the domain in 2006.
So the case was pretty simple in favor of the respondent.
But what happened after the case was filed is quiet interesting.
Two Way wanted to disqualify two of the respondent’s suggested panelists on the three person panel.
First, it wanted to disqualify The Hon Neil Anthony Brown Q.C. on the grounds that he is requested by the defendant’s attorney, Ari Goldberger, in a number of cases. Two Way argued that Brown thus had an economic incentive to find in Goldberger’s favor.
It’s true that Brown hears a lot of Goldberger’s cases. It’s also true that Brown takes a reading of the UDRP that, on balance, leans more toward respondents than many other panelists.
While I think Two Way’s request was uncalled for and should have been dismissed, that’s when things get zany: Two Way also asked to have another of the respondent’s nominees (who is unnamed) dismissed because he or she was of the same nationality as Goldberger and was an American citizen, whereas Goldberger’s law firm is in America.
If complainants could strike a panelist because they’re based in the U.S., that would certainly turn UDRP on its head!
The case continued with panelists Mark Ming-Jen Yang and Andrew F. Christie joining Brown…at least for a while.
Now, if you consider that Brown’s interpretation of UDRP leans a bit to respondents, then Christie’s leans quite a bit to complainants. Christie is the one who has tried to twist the language of the third prong of UDRP – registered AND used in bad faith – to be registered OR used in bad faith.
Panelist Yang is a bit of an unknown. He has heard about 40 cases dating back to 2003. He has found in favor of the complainant in all cases except one. The one case in favor of the respondent was a three person panel.
What happened between the three panelists over the six months the case was decided is not exactly known.
But Yang definitely wasn’t on board with the other two.
In the closing days of the Panel’s deliberations, Presiding Panelist Yang indicated that he did not wish to be associated with membership of this Panel which is issuing a majority decision, and that he had nothing more to say.
I believe this is unprecedented.
A member of a three person panel can disagree with the other two panelists. All he or she has to do is file a dissenting opinion.
But Yang literally walked away.
Further compounding the mystery is that Christie and Brown, while coming to the same ultimate decision in the case, disagreed on how to get there. Both panelists submitted their own opinions for each of the second and third prongs of the case. Thus, it would have been perfectly acceptable for Yang to submit his own detailed opinion on the case.
What should have been a simple case turned into a six month ordeal and a blemish on World Intellectual Property Organization.
Hey, where can I find out what number of decisions “A” Panelist has made in favour of Complainant & Respondent ?.
Frantisek Mrazek says
All past decision of this panelist should be reversed, beause now its clear he was on the take all the time.
We all have suspicion about panelists beeing on the take, now it can not get more clear than this.
Also this panelist should go to trial and jail. Should, but Americans are now busy hunting virtual terrorists and own citizens, not real criminals 🙂
@Mike – probably next best thing…in UDRPSearch.com, click Text below the search box (i.e. Domain, Complainant/Respondent, Case Number, Text) and type in something like “(exact name) panelist” (i.e. Andrew F. Christie panelist or just Andrew F. Christie). What you asked is a search feature WIPO, NAF, UDRPSearch, or whoever can maybe look into. 🙂
Ming Jen Ho says
The 30 or so cases handled by this panelist in the past were all slam dunk squats. While obviously involved he really hasn’t seen much less been apart of any contentious cases. Like pavlovs dog this guy was conditioned to hang guys out to dry. Now, he joined the party late and the other two panelists were way ahead of him. He was supposed to be the chair but I think never caught up to the other two panelists. When he issued his decision which no doubt contained some flawed logic akin to a renewal being tantamount to a new registration which was out of line with the other panelist Brown and Christie who o opine asked him what kind of strong weed he was smoking up there in British Columbia, the university of bc law school professor lost face and called it a day.
There is no doubt in my mind that his exclusive involvement in uncontentious cases made him ill prepared to chair this panel. I think that ultimately all the panelists including Ming himself realized this albeit too late
Nice coverage. Tricky to traverse (for you); interesting to read (for me).