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In Whose Language? Cybersquatting by Foreigners

Gerald M. Levine

There are no gatekeepers to prevent registrants from acquiring domain names incorporating marks that potentially violate third-party rights. Anyone anywhere can acquire domain names composed of words and letters in languages not its own through a registrar whose registration agreement is in the language of the registrant. For example, a Chinese registrant of a domain name incorporating a Norwegian mark as in <statoil.store> in which Complainant requests the proceeding be in English notes that Chinese is not an official language in Norway. Statoil ASA v. Jie Yu / Yu Jie, D2016‑1628 (October 21, 2016) (<statoil.store>).

While the default for challenges to the domain name is the language of the registration agreement, the decision turns on the facts of the case. Nevertheless, the default concept is in keeping with the universality of the Uniform Domain Name Dispute Resolution Policy. Rule 11(a) provides that proceedings are to be conducted in the language specified in the respondent's registration "unless otherwise agreed by the Parties." If not "otherwise agreed" (and it is unlikely it ever would be) Panels are given discretion to make that determination "having regard to the circumstances of the administrative proceeding."

Foremost of the circumstances are the practical consequences, namely costs of translation and time lost in closing the record. In Morgan Stanley v. Domain Admin / Whois protection, this company does not own this domain name s.r.o., FA1701001715021 (Forum March 12, 2017) (<morganstaney.com>) the registration agreement was in the Czech language. The Panel marshaled the usual (sensible) reasons in favor of "mov[ing] forward in English." Two circumstances (not always present together in language cases) made this an easy call: first, Panels (including the Morgan Stanley Panel) typically infer from default in responding to the complaint that respondent has no objection to proceeding in complainant's language; and second, Respondent registered a domain name composed of a typographic variant of the mark by omitting a letter. It would take an extraordinarily persuasive argument to prove a mistyped string confusingly similar to a mark is lawful.

Default, as such, is not (and never should be) the determining factor in these cases. Cancellation or transfer must rest on either direct evidence or strong inferences based on the record. The question naturally arises, how does a foreign registrant (presumably not conversant in complainant's language) learn that a complaint has been filed? The answer is found in the UDRP Rules for satisfying due process. Rule 2(d) instructs Providers to communicate with respondents "in the language prescribed in Paragraph 11", that is the language of the registration agreement.

Communications in this manner provide foreign respondents notice of the pendency of a proceeding and an opportunity to defend their registrations. WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.0, paragraph 4.3 states:

in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement.

The sensible reasons I mentioned above for proceeding in the language requested by complainant are set out clearly in Cartier International A.G. v. Zheng Jing, D2017‑0310 (WIPO March 30, 2017) (<cartier.shop>). Respondent appeared and objected to Complainant's request which after reviewing the facts the Panel granted:

(a) The content of the website resolved by the disputed domain name clearly features knowledgeable use of the English language.

(b) The wording in the content featured in the website resolved by the disputed domain name targets English‑speakers.

(c) Based on this evidence, using English as the language of the Complaint/proceedings would not place an undue burden on Respondent.

(d) Complainant is not acquainted with the Chinese language, and being forced to translate the materials of the proceedings into Chinese would disadvantage Complainant.

Respondent objected to the use of English as the language of the proceeding for the following reasons:

(a) Respondent is a Chinese legal citizen, and Respondent=s native language is Chinese.

(b) Respondent does not understand any other languages.

(c) Respondent cannot read or understand anything which has been written in English either in emails or attachments.

In resolving this preliminary dispute, the Panel took into account "the fact that the disputed domain name includes Latin characters and is registered in the new generic Top‑Level Domain ... space comprise[d] of the English word 'shop.'" Further,

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant; (a) the disputed domain name <cartier.shop> is registered in Latin characters and an English word, rather than Chinese script; (b) The gTLD of the disputed domain name is '.shop'. It is an English term; (c) The disputed domain name resolves to a website that includes both English and Chinese language content. It targets both Chinese‑ and English‑speakers; (d) Although Respondent submitted the Response in Chinese, Respondent has shown his/her capability to understand and use English.

Moreover,

In the Response, Respondent referred to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions as well as a few of previous UDRP decisions, which were written in English; (e) The three Annexes to the Response are all in English language; (f) the Center has notified Respondent of the proceeding in both Chinese and English; (g) the Center informed Respondent that it would accept a response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case.

Similarly in Riemann Trading ApS v. Ba Nguyen Thi Kim Hoang, CAC 101418 (ADReu April 5, 2017) (<perspirex.shop>) although here the challenged domain name is identical to the mark of a pharmaceutical product owned by a Swiss company distributed in the U.S. market. Where a respondent is offering the product (or competing products) in the English language, it will be inferred not only that English speakers are the intended target of the domain name, but the respondent is familiar with the language of the content. The Panel noted that "the Respondent is aware of the Complainant´s business language in English by using similar information in [ ] the disputed domain names."

This does not mean foreign registrants are prejudiced by failing to appear only that the non-appearance may factor into the language decision. To take a further example: in K & N Distributors LLC v. enjoymagic, FA1701001712422 (Forum February 25, 2017) the "Registration Agreement is in the Japanese language, thus making the language of the proceedings Japanese." However, "[p]ursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English."

Deciding to conduct the hearing in English does not predict the outcome of a case. It can't because even if the respondent fails to appear there are the other factors to consider. In K & N Distributors, Complainant lost because the "[r]egistration of the domain name [<7days magic.com>] predates both the filing date and date of first use in commerce of the trademark by many years." Respondent had a superior right by priority.

As a general rule, then, regardless of the language of the registration agreement, proceedings will go forward on the merits which means examining (first) priority and if priority favors complainant then the strength or weakness of the mark and the contents of the website to which the domain name resolves. It is important that the language finally decided by the Panel not be prejudicial to either one of the parties in their ability to state their positions for and against cancellation or transfer. In essence, providing an opportunity to participate for respondent satisfies the due process requirements.

By Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP. Information about the firm can be found on the Firm’s website at iplegalcorner.com. Mr. Levine has a litigation and counseling practice representing clients in Intellectual Property rights and management, Internet and Cyberspace issues, domain names and cybersquatting.

Related topics: Cybersquatting, Domain Names, Intellectual Property, Law, UDRP

 
   

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