By Michael Berkens
YU.Com Saved In One Of The Strangest & Longest UDRP Rulings Of All Time Source: http://www.thedomains.com
We finally have a decision on the UDRP for the domain YU.com, as the majority of a three member UDRP panel rejected the claim of the Two Way NV/SA of Waregem, Belgium.
We already know the UDRP Panel took what maybe the longest time to ever decide a URDP, nearly six months since it was filed.
Actually its one of the few things the panel may have agreed on as the decision starts off with this wording: “The decision has taken too long”.
In what is certainly one of the strangest UDRP decisions we have ever read, with the Complainant/ trademark holder trying to disqualify one of the panelists, the Honorable Neil Brown and where another panelist Mark Ming-Jen Yang, refused to be “associated with the decision.”
The was no doubt a battle amongst the panelists on what seems to be a slam dunk case, of a generic term, a two letter domain registered years before the trademark was registered seemingly based a position taken by a panelist, Mr. Yang, which I believe should bar the panelist from ever handling another UDRP.
Each of the panelist remaining after Mr. Yang bailed on making a decision even lay out their own arguments on why the domain holder had a legitimate interest int he domain and lack of bad faith.
The domain holder was represented by ESQwire.com PC
Here are the relevant facts and findings:
On August 24, 2011, Complainant filed an application for a European Community trademark for YU, in connection with goods and services relevant to its proposed business; it obtained registration of the trademark on January 25, 2012 as trademark registered number 010214666.
The disputed domain name was registered by Respondent on November 18, 2006 when it acquired it from a previous owner and Respondent has retained the disputed domain name since then.
Respondent uses the disputed domain name for the operation of a website that displays “pay-per-click” advertising links relating to general interest goods and services. The links are automatically generated by a third party provider.
Respondent’s website also invites offers to purchase , but it is said that the owner may not respond to offers of less than USD 1.67 million.
Complainant is a developer of mobile telephone applications, known as apps, and has plans to bring to market an app with the name YU, but has not yet launched it or commenced commercialization.
It wishes to have the domain name yu.com to use as part of its app, by which its customers will be able to participate in public games, buy tickets or products, receive discount coupons and other services, and also to use it to provide, for consumers who do not have a smartphone, the same services via the Internet as it intends to provide via the app.
The word “yu” is the Anglicized rendering of a common last name in China.
Decision by Majority
“This case has taken far too long.”
“The Rules require a three-member Panel decision to be by majority, and make allowance for any dissenting opinion.”
“Following extensive and exhaustive deliberations between the appointed members of this Panel over months, a majority comprising Panelists Brown and Christie has ultimately found it necessary, as the only viable option for bringing the matter to a conclusion, to render a decision by majority.”
“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.”
Each member of this Panel duly accepted to serve a number of months ago. The Rules only provide for possible appointment of a substitute panelist where circumstances disclosed after appointment give rise to justifiable doubt as to the impartiality or independence of an appointed panelist. It is furthermore generally understood that absolute incapacity or unavailability on the part of an appointed panelist may provide a basis for substitution.
Subject to such exceptional scenarios, an appointed panel generally sees the matter through to a decided conclusion.
On this basis, while noting Presiding Panelist Yang’s very recent stated intention to not be associated with membership of this Panel which is issuing this majority decision, Panelists Brown and Christie regard the Panel to be, and to always have been, comprised of its three appointed members.
In all of the circumstances, Panelists Brown and Christie, mindful of the interests of the parties, consider it justified, and indeed necessary, for a decision to be issued on this basis.
The decision must be read in this light, without presumption as to Presiding Panelist Yang’s views on any aspect.
7. Preliminary Issues
A. Complainant’s Application for Disqualification of a Panelist
In this proceeding Complainant applied to the Center to disqualify Panelist Brown from being appointed as a member of the Panel and, that application having been unsuccessful, has renewed it before the Panel and thus in effect has asked for the recusal of the panelist. It is to that application that the Panel now turns.
“On January 14, 2013 counsel for Complainant objected to the Center against the nomination of Panelist Brown and also the nomination of Respondent’s second nominee. ”
“The ground of the objection was that neither nominee could “credibly declare that they are impartial and independent to adjudicate this case”.
“The reason advanced for this assertion was that because of the nominees’ nomination in other UDRP cases by counsel for Respondent, they both had “a financial interest in as much as possible finding in favour” of counsel for Respondent and its clients. An additional ground of objection to the second nominee was that the second nominee “… and … (counsel for Respondent) have the same nationality. In addition … (the second nominee)… is an American citizen, and (counsel for Respondent) is an American law firm”.
“The Center replied to counsel for Complainant on January 22, 2013, stating inter alia that the Rules “include no provision for either party challenging the nominated co-panelist of the other party” and also that “we see no evidence of material conflict as such and accordingly we will proceed to invite party nominated co-panelist candidates as provided under the Rules”.
“On January 23, 2013 Panelist Brown submitted his Declaration of Impartiality and Independence to the Center, declaring his impartiality and independence. However, Complainant persisted with its objection.
“First, it took issue with the Center’s decision to disallow the objection and claimed that this decision was “unduly motivated, or even not motivated at all”. It then renewed its objection to the Panel. The challenge having been made, the Panel has naturally examined the Policy and the Rules to ascertain what, if any, powers it has to entertain it. Taking the view that neither the Panel as a whole nor any combination of Panelists has jurisdiction to decide Complainant’s challenge, the Panel notes the following”
The Panel has been able to locate only two previous decisions that touch on this issue.
They are Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 and the later decision of Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D2002-0030. In the Britannia case, the distinguished sole panelist decided that there was jurisdiction in the panel to decide the challenge.
“Neither the Policy nor the Rules explicitly creates a procedure through which a party can raise concerns about the suitability of a designated panelist. Rule 8 does, however, contemplate that a party may seek to communicate with a panel through the provider or with the provider itself. More importantly, it is critical that a mechanism be provided to ensure compliance with Rule 7, and also with the prescription of Rule 10(b) that all parties be treated with equality and be given a fair opportunity to present their case. Accordingly, this Panel finds it appropriate for a party with concerns about a panelist’s impartiality to communicate with the provider in order to raise any such concerns and to seek a prompt and fair resolution. In the event the provider declines to disqualify the panelist, it is equally appropriate for the party to move for the panelist’s recusal.”
The decision in the Kennedy Townsend case was, in effect, to the contrary. In that case the panel was a three-member panel and the presiding panelist was called on to decide the challenge. In an interim order, he decided that “[n]othing in the [Rules or Supplemental Rules cited by the Respondent] empowers the Presiding Panelist, or indeed a majority of the Panel, to rule on a Request for Recusal of a fellow Panelist. The presiding Panelist therefore has no jurisdiction to deal with this request […]. Accordingly, the Presiding Panelist declines to rule on the Request for Recusal or to consider it for any purpose”.
This Panel notes the fact that neither the Policy, the Rules nor the Supplemental Rules expressly provide a legal basis for one party to challenge the impartiality and independence of a panelist, in a three-member panel case, who was appointed by the Center from the list of candidates nominated by the other party.
It must further be recognized that in the case of a three-member panel, the UDRP process empowers each party to take an active role in the composition of the panel. Each party submits its list of three candidates (in order of preference) to be a panelist and the Center appoints one of them if it can, respecting the party’s preferences to the extent practical. As for the selection of the presiding panelist, each party is entitled to state its preferences from a list of five candidates assembled by the Center, and the Center will take each party’s preferences into consideration; specifically, the Center will balance their respective preferences. Accordingly, neither party “chooses” the presiding panelist, but both parties contribute to his or her appointment.
It is therefore clear from this analysis that the selection process for a three-member panel is deliberately designed to ensure that each party may make a significant contribution to the selection of one panel member and to the decision by the provider on the third member of the panel.
In these circumstances, it is not surprising that there is no express provision in the Policy or the Rules for one party to challenge the appointment of the other party’s panelist or the appointment of the presiding panelist.
For the same reason it is difficult to imply such a right when the whole structure of the system is to give an unchallenged right to parties in three-member panel cases to nominate one panelist and influence, to some extent, the choice of the third panelist.
The Panel also notes that, while it respects the strength of the reasons for decision in the Britannia case, that decision concerned a single-member panel, whereas the Kennedy Townsend case and the present case concern a three-member panel and in those cases each party has by design the ability to influence the appointment of one member of the panel, a dynamic that inherently is not in play in a single-member panel.
Accordingly, the Panel concludes that it has no jurisdiction to entertain Complainant’s challenge to the appointment of Panelist Brown.
8. Discussion and Findings
A. Identical or Confusingly Similar
Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights (paragraph 4(a)(i) of the Policy).
Complainant argues that it is identical to the trademark it relies on, namely its European Community mark registration for YU. It also submits that for the purpose of this comparison, the suffix “.com” which is a generic Top Level Domain should be ignored. The Panel agrees with these submissions.
It is true that the trademark in question was applied for on August 24, 2011 and registered on January 25, 2012, and that both of those events occurred well after the disputed domain name was registered on November 18, 2006.
However, it is now generally accepted that the consequences of such a series of events is not relevant to paragraph 4(a)(i) of the Policy, where the issue is whether Complainant has a trademark, not whether it had one at the time of registration of the disputed domain name; the latter consideration is left to the analysis of paragraph 4(a)(ii) and (iii) of the Policy.
The Panel therefore finds that Complainant has met the requirements of the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in the disputed domain name (paragraph 4(a)(ii) of the Policy).
Panelist Christie considers that Respondent has no rights or legitimate interests in the disputed domain name. Panelist Brown is of the contrary view. The reasons of the Panelists for their respective views are set out below.
Respondent asserted that it did not register (or did not purchase and renew) yu.com with Complainant’s trademark in mind because it did so in 2006, well before Complainant filed its YU trademark application that became registration and notes that Complainant had not yet begun commercialization with the trademark YU.
Respondent says that it has registered “…thousands of generic dictionary common word domain names, three and four letter domain names, and common surnames as domain names…” and gives examples such as , , <chavin.com”>, , all in a commercial venture to monetize valuable but “underdeveloped” words; and that “yu” is a “common family name subject to extensive third party use entirely unrelated to Complainant”.
Respondent explained its intentions and hopes about yu.com: “It was purchased (and renewed) because of its inherent value as a widely known surname. Therefore, any party with the last name “Yu” is likely to be attracted to the site and can use the links to find valuable information. Moreover, the Disputed Domain is offered for lease or sale (likely to a person that has the last name Yu)…” (Respondent’s Reply ).
Panelist Christie can arguendo accept the preceding assertions as true and still find unresolved the question of whether Respondent’s use of generates rights or legitimate interests therein under the Policy.
Panelist Christie refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Specifically:
2.2 Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)? The Consensus view is:
“Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)”.
2.6 Do parking and landing pages or pay-per-click links generate rights or legitimate interests in the disputed domain name?
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services”…. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP”.
Mapping the above UDRP jurisprudence requirement of “connection” to the present situation, Panelist Christie cannot find in Respondent’s submissions where it shows or explains how its PPC links are “genuinely related to the meaning” of the (family) name “yu”. He does not consider Respondent’s use of to generate rights or legitimate interests therein. That use is for a PPC site where the links have no connection to the word “yu” (as a family name, personal name, nickname or even as the (English) phonetic equivalent or pun of “you” – Respondent has made no attempt otherwise).
Respondent’s PPC links are unrelated to “yu” and are unrelated by design of Respondent. In fact, the only “connection” asserted by Respondent to “yu” as a last name is that it is a last name to attract “visitors” for links to “valuable information” which have nothing to do with “Yu”.
The preceding notion can be said of any name and of almost any website – simply replace “yu” in the preceding with any other term to arrive at the conclusion that Respondent’s assertion is simply a truism that, if accorded some application to “yu”, would be repugnant to the consensus view of panels reflected in the WIPO Overview 2.0.
Respondent put its case on the basic proposition that was chosen because Yu is a common Chinese surname and should thus be seen as analogous to those cases where a domain name is a generic or common word. In cases concerning a generic or common name, a principle and practice has been developed to the effect that this situation gives rise to a right or legitimate interest in the domain name provided that it is not used to target a trademark or its owner or to engage in other inappropriate conduct that is deleterious to the Complainant.
The cases where that principle has been applied are many and Respondent has cited some of them in its submission. The principle is also based on good common sense, as it enables the Internet and the domain name system to operate with reasonable freedom and at the same time protects trademark owners from unjustified attacks on their intellectual property.
In the present case, Respondent says that using a personal name as a domain name is tantamount to using a generic or common word and should be judged according to the same principles. There are clear decisions to the effect that this is a sound argument; indeed, it is accepted as an established principle and practice in domain name arbitration.
Applying the principle to the present case, then, it may be said that Respondent, first, in its evidence established, that “yu” is a common surname in the Chinese language, and, secondly, gave evidence that it was motivated by that fact in registering the domain name and, conversely, it was not motivated by the fact that the domain name was also a trademark. The latter point is pivotal to the present issue, as panelists rightly look to see if the registrant knew of the trademark owner or its trademark or had any other knowledge tending to suggest that it was targeting the trademark owner. That is vital, as the whole purpose of the UDRP is to inquire if the trademark owner is being attacked by the registrant of the domain name.
In the present case, however, it would have been impossible for Respondent or anyone else to have targeted a trademark for YU as none existed at the time or for years after the disputed domain name was registered and, indeed, nor had the eventual trademark owner, Complainant, even commenced the business that it is now keen to start.
It is therefore inconceivable that Respondent targeted Complainant or its trademark and equally inconceivable that it was acting in any way other than in good faith. The absence of any evidence to the contrary makes it more likely than not that Respondent registered the disputed domain name for the reasons it has given in its evidence, namely that it was attracted to the name because it is a common Chinese surname. At least, that explanation is plausible.
However, Respondent has used the website to carry links to generic sites promoting a wide variety of general goods and services. Thus, for example, there are links to insurance, cruises, lawyers, motor vehicles, finance and all of the other blandishments of modern life. They are in fact as general as goods and services could possibly be. Against this, however, it is said that the links are not related to the meaning of the name Yu and are therefore out of order. But that view is contrary to the decided cases. In Altom, the advertisements were for jobs couriers and related areas (and the Complainant was a software company with nothing to do with jobs or couriers); in Lana, the advertisements were for shopping , holidays, machinery, hot rods and other general lines of goods and services. In Rusconi, the site was used for a web mail interface. In Etam, the domain name was linked to an adult website. In all of these cases the domain name was legitimate. In all of them the links were generic, as was the domain name. In none of them was there any material directly linking the domain name to the names “tammy”, ”lana”, ”donna” or anything else; they were legitimate because they were generic goods and serviced hosted on a website to which a generic domain name resolved. There is no difference between these cases and the present case and, consistent with previous decisions and general principle, the generic use of the disputed domain name gives rise to a right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant must show that the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
Panelists Brown and Christie find that Complainant has failed to establish that the disputed domain name has been registered and is being used in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. Thus, Complainant has not met the requirements of paragraph 4(a)(iii) of the Policy, and the Complaint fails.
The reasons of the Panelists for their respective conclusions are set out below.
Complainant has not established the existence in this case of any of the circumstances enumerated in paragraph 4(b) of the Policy as being evidence of registration and use of the disputed domain name in bad faith.
However, the paragraph 4(b) circumstances are not exclusive of the circumstances that evidence bad faith, as the words “in particular but without limitation” make clear. Thus, circumstances other than those specified in paragraph 4(b) can establish the existence of bad faith action sufficient to justify the award of a remedy under the Policy.
Complainant has asserted that Respondent’s failure to correctly identify itself in the disputed domain name registration information and thereafter constitutes other circumstances that evidence bad faith for the purposes of paragraph 4(a)(iii) of the Policy.
In this Panelist’s view, for “other circumstances” to justify the award of a remedy they must be of a level of gravity proximate to the level of gravity of the circumstances specified in paragraph 4(b).
Put another way, to determine when “other circumstances” of bad faith are sufficient to justify the award of a remedy, requires an approach similar to the approach embodied in the ejusdem generis principle of interpretation of legal instruments. (In simple terms, the ejusdem generis principle of interpretation holds that where an enumeration of specific items is stated to be inclusive, only non-enumerated items of the same genera as the enumerated items are included.)
An ejusdem generis-like approach to determining which “other circumstances” are evidence of bad faith for the purposes of paragraph 4(a)(iii) requires consideration of whether the seriousness of the consequences of those circumstances are on a par with the seriousness of the consequences of the paragraph 4(b) circumstances. The seriousness of the consequences of a registrant’s self-misidentification here is not on a par with the seriousness of the consequences of the circumstances enumerated in paragraph 4(b). Unlike the paragraph 4(b) circumstances, a registrant’s self-misidentification does not, of itself, inevitably cause damage (as distinct from mere inconvenience) to the complainant. That this is so is evident from the fact that an inability to correctly identify the registrant did not preclude Complainant from bringing this proceeding under the Policy. As published decisions under the Policy attest, innumerable complainants have succeeded in proceedings where the true identity of the respondent is never established.
Panelist Brown agrees with the reasons given by Panelist Christie and adds the following further reasons.
Essential to this issue is whether bad faith of any sort has been demonstrated, within the generally accepted meaning of that expression. Bad faith necessarily carries a connotation of ill-will or bad motives towards a target. But there has been none of that in the present case, as Respondent has not done anything to harm Complainant, inconvenience it, deceive it or engage in any other untoward conduct towards it. Certainly there is no evidence or probability that could bring the case within paragraph 4 (b) (i) – (iv) of the Policy, as Panelist Christie has explained. Accordingly, if bad faith is to be established at all, it will not be found within the provisions of paragraph 4 (b) of the Policy but will have to be found under the general heading of bad faith or circumstances not specified in paragraph 4(b) (i)-(iv). It is here that the case of Complainant fails for there is no such bad faith that has been shown.
Complainant’s case is that it does not yet have a business using the expression “yu” on its app, but that it is minded to establish one and that, to that end, it has registered the trademark YU.
But Respondent acquired the disputed domain name several years before, on November 18, 2006 and for practical purposes is taken to have registered it on that date.
However, the trademark was not applied for until 5 years later, on August 24, 2011 and registered on January 25, 2012.
Accordingly, the trademark was not registered or even applied for until several years after the disputed domain name was registered.
It is therefore impossible to see how Respondent could have been motivated by bad faith towards Complainant or its trademark or anything else relating to the Complainant when, at the time of registration of the disputed domain name, Complainant’s trademark did not exist, had not even been applied for and Complainant had no business that could have been harmed by the use of the disputed domain name.
The principle on which those conclusions are based has been articulated in many decisions. Common to those decisions is the principle that bad faith cannot be shown unless the trademark relied on was registered before registration of the domain name.
In any event, the worst that can be said of Respondent is that its registration of the domain name was not “complete and accurate” or within similar expressions used in the Policy. There is, however, insufficient evidence to show that the registration was not “complete and accurate”. At best, the evidence relied on in the present case to show such incomplete information amounts to no more than minor inconsistencies.
Even if there were such evidence, correct identification of the registrant is not, as a general rule, something that is regarded by itself as of such significance that it can constitute bad faith and result in the transfer of a domain name. This is especially so given the existence of the UDRP – which is designed so that a remedy can be obtained (where warranted) whether or not the identity of the Respondent is known.
If a Complaint is filed against the registrant of record, the Complaint may proceed and succeed even if the true owner is not described completely and fully. If an order is made for transfer of a domain name, it is carried out even if the registrant is described inaccurately; any practitioner in the UDRP field has seen many cases where the domain name registrant is clearly a fictitious name and yet that does not prevent a Complaint from proceeding or an order for transfer being made and carried out.
In fact, although a UDRP action is nominally brought against the domain name registrant, in practice it is brought against the domain name – i.e. effectively it is an action in rem, not in personam. The correct description of the registrant is thus not of the significance or importance given to it by those who might say bad faith has been made out in this case. It was certainly not regarded by those who drew the UDRP as a ground of bad faith, as it is not specified as such and nor does it fit easily under the other circumstances category. It may be a breach of the registration agreement and consequences may flow from it if the Registrar takes action against the registrant. But that does not make it a form of bad faith, as the registrant may have had its own reasons, good or bad, for the incomplete description and yet such a shortcoming may not amount to bad faith.
D. Reverse Domain Name Hijacking
On balance, the Panel declines to make a finding of Reverse Domain Name Hijacking.