Although the use of three-member Panels for UDRP decisions is far less common than single-member Panels, they are sometimes requested by Respondents who feel that their defense is on the borderline of the Policy. And while three-member Panels often decide cases unanimously, there are rare instances where one member dissents.
This was the case in a recent decision involving the domain tiryaki.com and it highlights the fact that the UDRP is a fast-track process with limited mechanisms for reviewing and testing the reliability of evidence.
The Complainant submitted evidence that it owns a trademark registration for the TIRYAKI brand in relation to certain agricultural products, but the Respondent countered stating that the word also has a generic meaning which translates to mean “addictive” in English. The domain was registered in 2001, about one month before Complainant’s trademark application was filed. Further, the pay-per-click links at Respondent’s website related to various medical companies and not to any agricultural categories. Finally, the Complainant offered to purchase the domain from the Respondent but was told that it’s not for sale. After pressing the Respondent, the Complainant was told that an offer of more than EUR 80,000 would need to be made.
In support of its claim that word has a generic meaning and is not associated exclusively with the Complainant, the Respondent submitted a Turkish company registry showing over one hundred listings within the city of Ankara and evidence of other Turkish trademark registrations for the TIRYAKI name.
The majority of the Panel found that the Complainant could not support its claim of the Respondent’s bad faith because there was no solid proof that the TIRYAKI brand was used, as such, by the Complainant at the time the domain was registered, or that it was widely associated with Complainant’s company.
Further, the links on the Respondent’s website do not relate to the Complainant’s line of business and so it can’t be said that they were intended to disrupt Complainant’s business or earn Respondent a profit based on confusion with its trademark. Finally, Respondent’s request for such a large sum of money to sell the domain was made only at the urging of Complainant and Respondent did not, itself, start out by requesting this price.
The dissenting Panelist came at this from a very different angle and reached some different conclusions based on his review of the submitted evidence:
- First, he took the position that the Respondent has no rights or legitimate interest in the domain based on his position that the pay-per-click links to medical companies bear no relation to the claimed generic meaning of the word tiryaki.
- Next, he cited the strong reputation that the Complainant had even before its trademark application was filed.
- He then turned to Respondent’s submitted evidence and found that there is some duplication on the list of companies in Ankara and that the number of relevant Turkish trademark registrations is lower than claimed.
Based on this, the Panelist reached the conclusion that the Respondent had tried to mislead the Panel and that this, alone, was evidence of bad faith intent. Finally, he assumed that the Respondent’s initial refusal to sell the domain was a mere ploy and that, as a sophisticated domainer with thousands of names in its portfolio, it knew that it could not initially ask for a high price for fear of running afoul of the UDRP. By waiting and only mentioning the EUR 80,000 figure after some prodding by the Complainant, he knew that it would make it more difficult to use this discussion as evidence in the UDRP context.
I feel this rift between the Panelists shows that evidence in UDRP cases must be clear, unambiguous, and persuasive if a brand owner Complainant wants to succeed. The lack of any discovery, witness testimony, or cross-examination in UDRP cases leaves Panelists to interpret the submitted evidence only on its face. In this case, the evidence was on the cusp of what was needed to support the Complainant’s case and it lead to differing interpretations, and was considered differently by the majority and the dissenting Panelists.
Now that the Complainant has lost its UDRP case, I can only speculate on what outrageous price the Respondent will ask if the parties should, again, discuss a sale of the domain.
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