Gucci S.p.A. (“Gucci”) recently won a major UDRP verdict on 89 domains which were registered in 2011 by a China based Respondent through the registrar Xin Net Technology Corp., which is also located in China.
The domains all included the GUCCI mark surrounded by various terms related to clothing, shopping, and fashion – i.e., terms which are normally associated and/or used with the GUCCI brand. Most of the websites for the domains were simply portal sites which included sponsored links from Google which were in English and largely concerned GUCCI products. Not surprisingly the panel found that, based on the fame and history of Gucci, and the fact that Respondent was apparently using the domains to drive customers to sites related to Gucci and generate click-through fees, that the Respondent had acted in bad faith.
The panel also concluded that the language for the arbitration should be exclusively in English, even though Respondent was based in China (as well as the Registrar). Paragraph 11 of the UDRP Rules states that the language of the registration agreement should dictate the language of the arbitration proceeding (where there is no other agreement). Even so, the panel decided to use English for the following reasons:
- Complainant, an Italian company, filed its Complaint in English;
- Requiring Complainant to translate the Complaint and all documents into Chinese would cause delay and go against paragraph 10(c) of the Rules, which requires that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition.”;
- Respondents “demonstrated” they understood English because the domains were all combinations of the GUCCI mark with descriptive English terms.
- Many of the websites were published only in English;
- Respondents never responded to Complainant’s C&D letters indicating that they did not understand the letters or wanted the Complainant to communicate in Chinese; and
- Respondents never objected to using English.
Fundamentally, the issue of which language(s) to use in a UDRP proceeding is one of fairness, as dictated by UDRP Rules 10(b) and (c), and comes down to whether there would be a disadvantage to either party. Although there were plenty of reasons for the panel to decide to use English in this case, the panel’s logic could support finding that there is NEVER a need for a Complainant to supply translations when the UDRP Complaint concerns an English-language .com domain name which has links posted in English, barring a compelling argument from the Respondent that it needs a translation.
First, obtaining a quality translation for all of the submissions in a UDRP is expensive and requires extra time for the Complainant. Second, where the Respondent has simply registered the domain with a Google Ad program, whether Respondent understands English is besides the point because it is simply leaving the posting of links on the site up to Google’s Ad program. Thus, the links on the site are not a sound indicator of whether the Respondent is competent in the English language. Third, and perhaps most importantly, requiring a Complainant to provide a translation based on the language of the registration agreement incentivizes cyber-squatters to strategically register domains with foreign registrars simply to create an obstacle for the Complainant/trademark holder.
The very nature of cyber-squatting ties it to the language of the particular domain name. Thus, ICANN and the various Arbitration Providers (NAF, WIPO, etc…) should consider implementing rules which reflect the way that squatters abuse domain names and takes the burden of translating documents in a domain name dispute off the Complainant and puts it back on the cyber-squatter...