WIPO-selectie september 2012
Domeinnaamrecht. We beperken ons tot een doorlopende selectie van WIPO-geschillenbeslechtingsprocedures die wellicht interessant zijn. Hier een overzicht van de in de laatste weken gepubliceerde procedures. Ditmaal over: een obiter dictum over "Respondent Consent”, Cyberflight (overdracht eigendom/registrar hangende UDRP procedure), Het Panel zet de criteria uiteen voor het rechtvaardigen van een herhaalde klacht, in een concurring opinion wordt voorgesteld om ambtshalve domeinname hijacking te toetsen.
D2012-1437 conversbank.com / konversbank.com > Complaint denied
Indien het Panel dit had geoordeeld als "“Respondent Consent”, dan zou het oordeel anders uitvallen.
In light of the decision below, it is noteworthy that if the Panel had treated this case as a “Respondent Consent” and had adopted the short-cut route favoured by the panel in Merck KGaA v. c/o whoisproxy.com Ltd / Galib Gahramanov, G Domains, WIPO Case No. D2011-1271, the result would have been very different, but not in line with this Panel’s reading of the requirement of paragraph 4(a) of the Policy.
D2012-1153 viedemerde.com > Transfer with concurring opinion 
Over "cyberflight".
The Complainant also provided sufficient evidence to prove that the disputed domain name was used to direct Internet users to a parking webpage containing pay-per-click links that direct users to websites that offer various goods and services. This constitutes bad faith registration and use of the disputed domain name as Complainant’s trademark was being used in it for commercial gain. (See Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450). The disputed domain name currently appears to be parked and not actively used. UDRP panels have found that such “use” of a website may not prevent a finding of bad faith, having regard to the totality of the circumstances. (See WIPO Overview 2.0, paragraph 3.2)
Also, as established above, Respondent 1’s transfer of the disputed domain name after it was informed of the Complaint constitutes cyberflight. UDRP panels have ruled that cyberflight is indicative of bad faith registration and use under paragraph 4(b)) (See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).
Concurring opinion
“Cyberflight” is an attempt to delay a UDRP proceeding by changing the domain name registration details or registrar after learning of the complaint (See PREPADOM v. Domain Drop S.A. (PREPADOM-COM-DOM), WIPO Case No. D2006-0917). Transferring the disputed domain name during a pending proceeding is considered cyberflight and is in direct violation of the Policy paragraph 8(a). As was asserted by the UDRP panel in Humana Inc. v. CDN Properties Incorporated, WIPO Case No. D2008-1688, “there is no bright line rule regarding what constitutes a “pending proceeding”, prior cases have found that process starts from the filing of the complaint rather than from the formal commencement of the proceedings. See PREPADOM v. Domain Drop S.A., WIPO Case No. D2006-0916 or Imperial Chemical Industries, PCL. v. Oxford University, WIPO Case No. D2001-0292.”
D2012-1149 
publicstoragephoenix.com > Complaint denied
Het Panel zet de criteria uiteen voor het rechtvaardigen van een herhaalde klacht
These criteria were followed and supplemented in Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490 where the panel, also following general principles applicable to re-litigation, required an UDRP complainant to demonstrate that its re-filed complaint should be considered, based on clearly identified grounds, proceeding to a decision on the merits only where the complainant made out aprima facie case to justify re-filing. See also, in accord, Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057 where the panel permitted re-filing of a complaint in view of material, credible results of an investigation conducted by an Australian competition and law enforcement authorities which were simply not available at the time of the prior decision. Paragraph 4.4 ofWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), specifies the criteria justifying a re-filed complaint as being:
a) relevant new actions which have occurred since the original decision;
b) a breach of natural justice or of due process has occurred, or other serious misconduct in the original case (such as perjured evidence); or
c) newly presented evidence that was reasonably unavailable to the complainant during the original case.Given the criteria set forth above, the Complainant here has not met its burden.
First, the Panel views the existence of potentially inconsistent decisions as insufficient to justify re-filing. As discussed, apparent inconsistencies can and do arise between otherwise seemingly similar decisions, which can be justified on a more careful examination of the specific underlying facts and governing law. Such a situation simply does not rise to the high level demanded by the Grove/Creo andWIPO Overview 2.0, paragraph 4.4 criteria above.
This Panel will not substitute its view for those of the panel in Public Storage 1. The Complainant had a full, fair and complete opportunity to be heard before that panel. While the Complainant basically points to alleged procedural errors inherent in that panel’s decision and fervently disagrees with the result, we will not entertain its disagreement nor opine on the propriety of that decision.
Second, the Panel finds that the additional fact advanced by the Complainant that the registration for one of the domain names in dispute inPublic Storage 1, which is not before the Panel in the present matter, i.e.
D2012-0614
legoego.com
> Met enige twijfel van het panel omtrent het onderdeel "ter kwader trouw", omdat de verweerder geen bevredigende verklaring heeft voor de keuze van de domeinnaam vertaald uit het Chinees, wordt de klacht toch afgewezen. LEGO is niet in haar belangen geschaad.
On the other hand, the Respondent has not provided a completely satisfactory explanation for the choice of the domain name. To this panel, “Legoego” is not the most obvious choice for an online shop trading under the name “Le-Yi-Gou”. It does not seem to the Panel to be a transliteration as submitted by the Respondent. If the Respondent’s transliteration submission was correct, it seems to this Panel that, “乐易购” should be “le-e-go”, but not “le-go-e-go”. There is the addition of an additional syllable “go”. The Respondent stated it did not respond to correspondence from the Complainant because it did not understand the correspondence. This may be true, but the correspondence from the Centre was sent to the Respondent in Chinese and English.
In this case, on the evidence before the Panel it appears the Respondent is running a legitimate business and not selling any products which compete with the Complainant or are likely to damage the Complainant’s brand; there is no use of the trademark LEGO by itself on the website; and there is no other evidence of any likely damage to the interests of the Complainant or to its trademark LEGO.
The Panel therefore finds that, on the evidence before it, it cannot conclude that the Respondent has been using the disputed domain name in bad faith. Having reached its conclusion, the Panel does not need to decide if the Respondent registered the disputed domain name in bad faith or has rights and legitimate interests in the disputed domain name.
Accordingly, somewhat reluctantly, the Panel has determined to deny the Complaint.
D2012-1326 
altom.com > Complaint denied
In de concurring opinion wordt voorgesteld om ambtshalve domeinname hijacking te toetsen.
There was never any prospect of proving any of the three elements in the Policy as the facts clearly do not exist to prove them and the Complainant seemed to acknowledge this by not even attempting to prove them. It did not submit that it had a registered or common law trademark or adduce any facts that, even on the most charitable interpretation, showed that it had such an entitlement. Its case on the other two elements was a series of formal assertions and reliance on the fact that the disputed domain name was for sale. It also overlooked the main point about this case which is that the disputed domain name was registered 6 years before the Complainant was incorporated, requiring that for the Respondent to be liable, even in a layman’s sense, it must have had what were referred to in Success Bank v. ZootGraphics c/o Ira Zoot, NAF Claim No. 1259918 as “psychic powers” to predict that the Complainant would be incorporated several years later.
All of this might be put down to inexperience rather than bad faith. But what has swayed me is that instead of dealing with the evidence, the Complainant chose to attack the Respondent’s bona fides and to allege, before it saw the Response and the Respondent’s version of events, that it was guilty of bad faith and that it was “predatory and parasitical”, apparently because it had registered a domain name that the Complainant, 10 years later, now wanted, but which is for sale at a price it does not want to pay.
Such allegations can always be made, but they should not be made unless there seem on reasonable grounds to be facts to support them. Moreover, those who make such allegations run the risk of an examination of their own bona fides, for allegations of bad faith made without supporting facts are themselves a form of bad faith and that is the feature that the Rules require to be in evidence before a finding of Reverse Domain Name Hijacking may be made. When it is then seen on such an examination that its own case, complete with accusations of bad faith and of other allegedly improper behaviour, is not only without merit but entirely baseless, a finding of Reverse Domain Name Hijacking is open and should be made in an appropriate case. This case, on the totality of the evidence is such a case and it is by no means a borderline one.
D2012-1329
youi.com > Complaint denied with dissenting opinion
In de dissenting opinion wordt uitleg gegeven over de ter kwader trouw registratie van de domeinnaam door de verweerder.
It is true that the Complainant did not prove that the Respondent had actual knowledge of the Complainant or its trademark rights at the time it purchased the disputed domain name. As other panelists have recognized, this is not surprising, because
“… in a Policy proceeding, without provision for discovery and live testimony, a complainant has little or no opportunity to obtain evidence routinely available in civil litigation but ordinarily within the control of the respondent. For this reason bad faith may be proven inferentially.” Public Service Electric & Gas Company v. Definitive Sports Management LLC, WIPO Case No. D2012-0617 (“the PSEG Decision”).
The PSEG Decision’s discussion of bad faith is instructive. In that case, the Panel found that the Respondent’s conduct did not amount to bad faith registration or use. But is also recognizes the concept of “willful blindness”, where the respondent is a professional domain name registrant who turns a blind eye to third party trademark rights.
Here, the Respondent is a well-known professional domain name registrant that purchases domain names and operates pay-per-click websites. It has been involved in a number of prior disputes under the Policy, including disputes where the complainant was successful (, , ) and disputes where the Respondent was successful (...).
It is true that the Complainant did not prove that the Respondent had actual knowledge of the Complainant or its trademark rights at the time it purchased the disputed domain name. As other panelists have recognized, this is not surprising, because
“… in a Policy proceeding, without provision for discovery and live testimony, a complainant has little or no opportunity to obtain evidence routinely available in civil litigation but ordinarily within the control of the respondent. For this reason bad faith may be proven inferentially.” Public Service Electric & Gas Company v. Definitive Sports Management LLC, WIPO Case No. D2012-0617 (“the PSEG Decision”).
The PSEG Decision’s discussion of bad faith is instructive. In that case, the Panel found that the Respondent’s conduct did not amount to bad faith registration or use. But is also recognizes the concept of “willful blindness”, where the respondent is a professional domain name registrant who turns a blind eye to third party trademark rights.
Here, the Respondent is a well-known professional domain name registrant that purchases domain names and operates pay-per-click websites. It has been involved in a number of prior disputes under the Policy, including disputes where the complainant was successful (, , ) and disputes where the Respondent was successful (...).
