Sugoi obtains transfer of '' second time around

A National Arbitration Forum panellist has ordered the transfer of the domain name '' to Hi Fibre Textiles (Sugoi) Ltd (Sugoi), a leading manufacturer of high-performance athletic apparel. Nearly four years earlier, another panellist applying the Uniform Domain Name Dispute Resolution Policy (UDRP) had refused to transfer the same domain name in a case involving exactly the same parties and substantially the same facts.

The facts were largely undisputed and can be summarized as follows:

  • Sugoi is a Japanese word meaning 'cool' or 'awesome'.

  • Sugoi holds several trademark registrations for SUGOI in various countries.

  • Peter Anderson registered '' and for some time displayed personal photographs on the site hosted under the domain name, along with a link to another website.

  • Sugoi contacted Anderson by telephone shortly after he had registered ''. (The parties disagreed as to what transpired during that conversation.)

  • Shortly after the telephone conversation, Anderson changed the name of a company of which he was a principal from Axess Mail Order Depot Ltd to Sugoi Online Internet Services Ltd.

  • After Sugoi's counsel demanded transfer of '', Anderson changed the website to a list of links to internet search engines, and 40 Japanese companies and hotels.

  • Anderson advised Sugoi that he (i) was active in the internet business, and (ii) had a business plan to use ''.

In the July 2000 UDRP decision, the panellist held that Sugoi had not established Anderson's bad faith or lack of legitimate interest. However, the panellist hinted at reservations regarding Anderson's plan for developing the site and dismissed the complaint "without prejudice to [Sugoi]'s filing of a complaint in the event that evidence of illegitimate purpose and bad faith, based solely on [Anderson's] conduct after the rendering of this decision, arises".

In the nearly four years that followed the first '' decision, Anderson did not make any changes to the content of his website. However, Sugoi filed a second UDRP complaint on March 2 2004. Sugoi argued that Anderson's alleged business plan for '' was belied by his passive holding of the site for over three years. Relying, among other things, on this failure to develop the site, Sugoi submitted that Anderson's bald assertion of a plan to use '' (for which he never offered any evidence) was insufficient to show a bona fide plan to use the domain name under the UDRP.

Anderson relied on the findings in the first '' decision, including the fact that sugoi is an ordinary Japanese word. He claimed that he still intended to develop the site but that he had lacked the resources to do so in the years since the first decision. He also submitted that he was reluctant to develop the site for fear of reprisal from Sugoi. As in the first case, Anderson offered no evidence of his plans.

In a lengthy decision, panellist James Bridgeman ordered the transfer of ''. He held that res judicata did not arise because (i) the first complaint had been rejected without prejudice to a re-filing, and (ii) the central issue in the second complaint related to the significance of Anderson's inactivity during the time since the first decision was issued.

Bridgeman held that Anderson's explanations for his inactivity were not convincing in light of the following circumstances:

  • the earlier panellist's doubts regarding the alleged plan for '';

  • Anderson's failure to produce evidence of the alleged plan in either complaint; and

  • Anderson's claim to have been active in the internet business for eight years.

With respect to bad faith, Bridgeman held that Anderson's inactivity (and lack of credible evidence or explanation regarding his alleged plan) demonstrated that he in fact never had any bona fide intentions of putting a business plan into place.

The '' decisions suggest that trademark owners may be able to successfully file more than one complaint against the same respondent regarding the same domain name in appropriate circumstances. In order to help ensure that this right is available if needed, complainants may wish to add an alternative claim to their complaints: a request that, if the panel finds that the complaint should be dismissed, it does so without prejudice to the complainant's ability to re-file in future. While this may not be desirable as a matter of strategy in every case, the '' decisions (and others mentioned therein) provide a possible precedent in this regard.

Alex Cameron and David Wotherspoon, Fasken Martineau DuMoulin LLP, Vancouver

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