Complainant rebuked for using UDRP as cheap alternative to court litigation

International
In Credit Europe Bank NV v Yu (Case D2010-0737, July 14 2010), a World Intellectual Property Organization (WIPO) panel has dismissed Credit Europe Bank NV's assertion that a transfer should be ordered on the basis that it had a greater interest in the domain name 'crediteurope.com' than the respondent, giving rise to a very interesting concurring opinion from panellist Richard G Lyon.

Credit Europe Bank NV, which was founded in 1994 in the Netherlands, provides banking and financial services in a number of countries. Peter Yu, an individual residing in Hong Kong, registered the domain name 'crediteurope.com' on October 15 2003.
 
On May 7 2010 Credit Europe submitted a complaint to WIPO with a view to obtaining the transfer of the domain name. On June 9 2010 a response was received and accepted by WIPO. On June 23 2010, following assertions made by Yu, Credit Europe submitted a supplemental filing to clarify the complaint.

To obtain the transfer of a domain name under the Uniform Domain Name Dispute Resolution Policy (UDRP), a complainant must satisfy all three limbs of the policy - namely:
  • The domain name registered by the respondent is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
  • The respondent has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.
Credit Europe based its claim on a number of trademarks including the term 'Credit Europe', the earliest of which were applied for on September 25 and 28 2006.

After addressing two procedural issues in relation to the timely submission of the response and whether the supplemental filing from Credit Europe was to be accepted or rejected, the three-member panel proceeded to address the central fact in this case - namely, that the domain name significantly predated the first trademark applications filed by Credit Europe. It is well established that such circumstance, in the absence of other evidence, would normally suggest that Yu had registered the domain name without knowledge of Credit Europe, hence in good faith.

This is what Yu highlighted in its response and what the supplemental filing sought to clarify. However, according to the WIPO panel consensus view:
 
"in certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found."
 
The complaint and the supplemental filing failed to substantiate that it was the case in the present instance and that, at the time of registration, notwithstanding the absence of a registered trademark, Yu was likely to have registered the domain name in bad faith.

In addition, in a rather unusual attempt to convince the panel, Credit Europe stated that the domain name ought to be transferred into its ownership, since its interests were more important and carried bigger weight than Yu's interests. Regardless of its potential veracity, this argument clearly was not within the scope of the UDRP and it was unsurprisingly brushed aside by the panel.

Interestingly, one of the panellists, in his concurring opinion, went further and considered that Credit Europe had used the UDRP in bad faith. As Lyon very aptly put it:
 
"The policy has been in force for more than a decade and the thousands of cases decided under it now constitute a workable body of (to use a legal term) precedent. In my opinion, any complainant, and even more so any professional representative of a complainant, should be at least minimally versed in the policy, the rules, their scope and their limits. It is no excuse that a party or its representative is unfamiliar with clear policy precedent, much less the clear language of the policy and the rules themselves. The policy's strict timelines, limited pleadings, and avoidance of lengthy and expensive discovery may well tempt a complainant into filing a UDRP complaint as a less expensive, quick-and-dirty alternative to an infringement action or other legal claim."

Forum shopping is a common practice whereby the quicker, cheaper and more convenient solutions are sought. As a result, instances of abusive use of the UDRP do occur. However, the UDRP has proven to be a coherent system with a rigorous approach to what is covered by the policy and what is not.

Thus, it is hardly surprising that the complaint was rejected. It seems that Credit Europe did try to game the system by using the UDRP as a shortcut and cheap alternative to court litigation, even though it was clearly not the appropriate forum for the dispute at hand. Lyon's statement must be applauded, as it is important to preserve the integrity and efficacy of the UDRP, and not allow it to be diluted and abused, as Credit Europe sought to do in the present instance. What is at stake in instances like this is the integrity of the UDRP as a whole.

David Taylor and Vincent Denoyelle, Hogan Lovells, Paris

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