UDRP Panel Draws Line In figaro.CLUB Decision
February 17, 2015
By slevy
The UDRP, as I’ve noted before, was designed to be a quick and less-expensive process for brand owners to go after cybersquatters. As such, it cuts many corners that are present in court-based litigation such as discovery, motions, testimony, cross-examination, and routine oral argument.
Notwithstanding this original intent, there has been a noticeable expansion in the scope of scenarios that have been accepted by UDRP Panels, and a number of decisions do get into splitting hairs over some rather complex disputes.
Of course, there are some Panelists who have drawn a line beyond which they won’t go with the UDRP.
Such was a case involving the domain figaro.club. The Complainant is Societe du Figaro and has been publishing a daily newspaper under the historic name LE FIGARO in France since the 1800’s. The Complainant asserted that the Registrant had no legitimate interest in the domain and registered it in bad faith as the domain resolves to content that “look[s] like a news website…”.
The Respondent claims he registered the domain because he and a number of other ex-pats living in New York City used to visit a particular coffee shop in New York City called The Figaro Café, which dates back to the 1960’s. These friends would discuss cultural, political, and other issues regularly at this shop.
Unfortunately, the coffee shop closed in 2008, and the Respondent claims he thereafter conceived of a virtual Figaro Café where he and his friends could continue to discuss various issues through the Internet. The current content of the website is comprised merely of test pages that Respondent was using to determine which software platform would be utilized in association with the site.
Normally, UDRP Panels require something more than a respondent’s own statements concerning its intent before they will decide that a legitimate interest exists in a domain. A corporate registration certificate, insurance policy, business license, or at least detailed written plans may suffice.
However, in this case, the combination of the Respondent’s explanation coupled with the independently verifiable facts of The Figaro Café’s prior existence and its popularity with the New York ex-pat community lead the UDRP Panel to conclude that this dispute would be better suited to a “fully contested proceeding which permitted cross-examination and reply evidence…”. Thus, the UDRP is not the proper venue where critical issues of fact are unresolved by the limited evidence presented by the parties.
This case highlights both the limitations of the UDRP as well as the need for experienced complainant’s counsel to carefully evaluate the likelihood of success of a given case. It also shows that even a case which appears sound at the time it is filed may turn around very quickly when a response reveals new facts that might lead to a reevaluation of success and perhaps a change in strategy by the complainant.
It is not known whether the Complainant here tried to negotiate a settlement of the dispute (such as the purchase of the domain), but a settlement certainly would have been a better approach to take before this adverse decision drove up the price of the domain.
