The World Intellectual Property Organization (“WIPO”) recently denied a UDRP complaint over the domain name www.yu.com. The Complainant brought the action against the registrant (an individual in China) who had owned the domain since November 2006. The case is noteworthy mostly for the events surrounding it – namely that it took over 6 months for the panel to make a decision, one panelist refused to participate, there was a filing to disqualify a panelist for alleged prejudice, and the determination that complainant was not guilty of reverse domain hijacking even though it had barely used the YU mark and it has a significant alternative meaning/usage in the Chinese language.
The complainant was interested in the domain because it intended to market a mobile app called YU that would provide buying/selling services over the Internet. The complainant registered the YU mark with the European Community in January 2012, reg. no. 010214666.
The registrant, however, had owned the domain since November 2006. The panel also noted that “the word ‘Yu’ is the Anglicized rendering of a common last name in China.” The website displayed generic advertising/links that had nothing to do with the complainant and that apparently garnered significant traffic as the registrant would not sell the domain for anything less than USD $1.67 million.
A three member panel was appointed and a flurry of filings ensued, including a filing by the complainant objecting to the placement of Panelist Neil Anthony Brown on the basis that he had a financial interest in favor of the respondent and that because he was American he would be prejudiced and side with the respondent – who was using an American law firm. This was soundly rejected.
To complicate matters, the presiding Panelist Mark Ming-Jen Yang withdrew from the Panel and refused to render any sort of opinion. Because only a majority is necessary in UDRP cases, the remaining two Panelists decided the case, but the situation was highly unusual for a UDRP case, particularly one that was weak and lacked merit.
The remaining arbitrators, Panelists Brown and Panelist Christie disagreed on the issue of rights, but agreed that there was no evidence of bad faith. Specifically, Panelist Christie found that the Respondent did not have rights or a legitimate interest in the domain name because the third party ad links on the site had nothing to do with the common dictionary word/name “yu”. Panelist Brown on the other hand found that the generic, third party links could provide the basis for the respondent to have rights in the <yu.com> domain and cited a number of earlier UDRP decisions as precedent.
As for bad faith, the two working Panelists agreed there was no evidence of bad faith. For this element, complainant argued, weakly, that there was bad faith because Respondent had refused to identify himself during negotiations over the domain. The respondent explained this by noting that he was simply trying to maintain his privacy and UDRP Policy indicates that “self-misidentification does not, of itself inevitably cause damage (as distinct from mere inconvenience) to the complainant.”
The take away from the case is that Complainants must be careful in bringing UDRP claims for domain names that are common terms or have alternative usage. Further, an established mark and a clear/direct link to the alleged bad faith conduct should be a pre-requisite. Although the Panel did not find reverse domain name hijacking here it probably should have...