(grudgingly) denies UDRP for YahClick.com and YahLive.com — WIPO panel
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 Firm and affiliated firms 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 states it started promoting Yahlive in April 2009, shortly ahead of Yahlive.net and Yahlive.co.uk were registered and shortly ahead of 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 regarding 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 ought to properly be addressed by a court of competent jurisdiction, and accordingly, the Complaint must be dismissed.
