The Complainant is E. Remy Martin & C° of Cognac, France, represented by Santarelli, France.
The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia/ Emedia Development Ltd of Stuttgart, Baden-Württemberg, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2013. On November 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 27, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 2, 2013.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. The Response was filed with the Center on December 24, 2013.
The Center appointed Sir Ian Barker as the sole panelist in this matter on January 14, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a French company selling luxury cognac under the trademark LOUIS XIII. The Respondent registered the disputed domain name on November 5, 2013. 5. Request for Suspension or Termination of Proceedings
In its Response the Respondent requested that the Panel suspend or terminate the present proceedings pending the final decision of a German Court in legal proceedings issued by the Respondent. It was alleged that these Court proceedings had been served on the Complainant and the Registrar. Annexed to the Response was a letter in English from a firm of German lawyers in Augsburg, addressed to the Registrar, stating that a claim had been filed in the District Court at Stuttgart against the transfer of the disputed domain name. Attached to the letter was what appeared to be a copy of a pleading and an official message from the Court. The proceedings appear to have been filed on December 16, 2013.
The Panel is unable to understand this document because it is in German. The Respondent was requested to provide a translation but has refused to do so. However, the Panel has to rely on the information contained in the letter from the German lawyers which clearly states that the proceedings have been issued. The Respondent should have provided a translation of the Court document.
The Respondent’s request is made under paragraph 4(k) of the Policy and paragraph 18 of the Rules. The effect of these is that the Panel has discretion to suspend or terminate a proceeding under the Policy where proceedings in a national court have been commenced during the course of a UDRP proceeding, as was the Respondent’s current application to the Court in Stuttgart.
Paragraph 4 (k) of the Policy reads as follows:
“Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is conducted. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b) (xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b) (xiii) of the Rules of Procedure for details). If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.
Paragraph 18 of the Rules provides:
Effect of Court Proceedings
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
(b) In the event that a Party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8 above.”
In this case, the Complainant filed a complaint alleging that all the provisions under paragraph 4(a) of the Policy applied to the disputed domain name. It sought the transfer of the disputed domain name from the Respondent to the Complainant. In view of the decision of the Panel to terminate this UDRP proceeding, there is no point in detailing the submissions, let alone making any decision or comment thereon.
There is no need for this Panel to address the merits before dealing first with the Respondent’s request to suspend or terminate the proceedings under the Policy pending the decision of the German Court. Since the Panel is of the view that the present proceeding should be terminated, it would not be appropriate for the Panel to opine on the merits of the Complaint which apparently covers the very same subject matter before the Court.
It is obvious that proceedings in the Court of competent jurisdiction could involve oral testimony and cross-examination of witnesses. This court process must be far more stringent than the summary procedure under the Policy which normally involves one submission from each party and a decision by the Panel “on the papers” without hearing any witnesses.
On January 16, 2014 the Panel issued an Administrative Panel Procedural Order No.1 requiring the Respondent to submit a translation of the German Court document which accompanied the Response within three working days, (by January 19, 2014). It also invited the Complainant, within the same time limit, to make submissions on the Respondent’s application to terminate or suspend and allowed the Respondent a further three working days i.e. by January 24, 2014 to make submissions in reply.
In several email communications to the Center, Mr. Pepin, the director of Emedia Development Limited, displayed hostility to proceedings under the Policy and opined that the Respondent would get a “better decision” from the German Court. Mr. Pepin concluded one email with gratuitous offensive remarks implying that the Panel (who has never previously had any involvement with Mr. Pepin) was biased against the application and would grant to the Complainant the relief it sought. The Panel will not dignify Mr. Pepin’s comments by repeating them. 6. Complainant’s Submissions on Termination/suspension
In its submissions filed pursuant to the Panel’s request, the Complainant referred to the decision in Tiara Hotels and Resorts LLC, v. John Pepin, WIPO Case No. D2009-0041 which refers to the case DNA (Housemarks) Limited v. T Co,WIPO Case No. D2009-0367, where the panel stated:
“Automatically granting a request to suspend or terminate might be subject to abuse by an unscrupulous respondent, allowing complication of or undue delay in resolution of cybersquatting disputes, in contravention of a scheme for the prompt resolution envisaged by the UDRP.”
The Rules relating to suspension or termination in the light of court proceedings like many other procedural provisions (in the Policy and civil litigation), may be manipulated for delay or other nefarious purposes. Each application requires the Panel’s scrutiny to detect, if possible, any such activity.
The Complainant further pointed out that the Respondent in the Tiara case was the same Mr. Pepin as here and that the panel in the previous case had refused to stay proceedings in a German Court. That panel considered that the lawsuit had been filed long after the UDRP proceeding had been initiated, after the Respondent had filed a response, had elected a single-member panel and had filed various additional submissions with the Center. In those circumstances, the panel considered it inequitable for the panel to suspend its deliberations, notwithstanding the litigation in the German Court.
The Complainant quoted, again from the Tiara case, a finding that Mr. Pepin was a “cybersquatter”. It recorded pejorative references to Mr. Pepin in that decision. The Complainant also quoted other decisions under the Policy where Mr. Pepin had unsuccessfully defended claims to transfer domain names.
Although the Panel was unable to check fully because the Panel has not been provided with a translation of the German proceedings by either party, the Complainant states that in the Court proceedings, the Respondent acknowledged that it registered the domain name in order to sell it. The Complainant submitted that this fact alone indicated bad faith.
Also in the Court proceedings, the Complainant noted the Respondent fears that the present UDRP decision would be issued in favor of the Complainant, and thus, indirectly accordingly to the Complainant, the Respondent admitted that the legal proceedings in Germany were a stalling tactic. The Complainant further asserted that in the German pleadings, there is no argument on the merits of the case, since the Respondent did not contest the existence or the validity of the Complainant’s rights. The Complainant disputed the Respondent’s claim that it was working towards a resolution with Louis XIII Holdings Limited which is not a party to either of the proceedings and on a policy of the proceedings in the German Court. There is no such co-operation. Therefore this contention of the Respondent shows unscrupulousness and/or bad faith and the Panel should not grant suspension.
The Complainant next turned to the registration agreement for the disputed domain name whereby the Respondent agreed to be bound by all the terms of the Policy which were incorporated in the registration agreement. It represented that the registration of the disputed domain name was made in good faith and did not in any way infringe the property rights of any other party. The Policy has been established in order to settle domain name disputes quickly and fairly. 7. Respondent’s Submissions on Termination/Suspension
In his response to the submissions of the Complainant, Mr. Pepin as director of Emedia Developments Ltd stated in summary that for the Panel to ignore the fact that legal proceedings had been issued shows “scant regard” for the Court and is an attempt to influence such legal proceedings. The Registrar has confirmed to him that it will not transfer the domain name to the Complainant until the conclusion of the legal proceedings and that therefore it would be “poor form” if the Panel were to ignore such proceedings.
The Respondent threatened to put the Panel, the Center and the Complainant “on notice” should the Panel continue to make a decision of any kind and thereby influence the legal proceedings. The Respondent was to “reserve all rights to respond legal to such matters. This will be a matter for the Respondent’s Attorney” (The Panel emphasizes he is not swayed by such a threat or by the offensive statement referred to earlier).
The Respondent submitted that in the Tiara case the procedure under the Policy had been much more advanced before the Court proceedings commenced. He stated that the German Court had ruled that the Policy was “unfair” and that the disputed domain name should remain with the Respondent. This Panel notes however that no copy of any judgment issued by a German Court was supplied to justify this assertion
The Respondent objected to what he characterized as “sweeping statements” by the Complainant about numerous different persons. He states that it is easy for the Complainant to make such assertions knowing that there will not be a full hearing. The Respondent ended his submission with the following:
“That is all I can say and if the Panel does not suspend this UDRP then it will merely strengthen [m]y knowledge how twisted and biased the UDRP has become.” 8. Discussion
The Panel will consider whether suspension or termination is appropriate in this case, or whether it should proceed to decision.
There have been several decisions on paragraphs 4(k) of the Policy and 18 of the Rules. Some are mentioned in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.14.
Of the many UDRP decisions in this issue, the one the Panel finds most helpful and most akin to this case is DNA (Housemarks) Limited v. T Co, WIPO Case No. D2009-0367. In that case, the proceedings under the Policy were filed on March 20, 2009. On April 15, 2009 the respondent lodged a request to suspend or terminate proceedings pursuant to paragraph 18 of the Rules on the grounds that the respondent had elected to have the dispute decided in the Superior Court of Justice for the Province of Ontario in Canada. Unlike the situation in the present proceedings, a copy of the statement of claim (in English) was supplied to the Panel. It sought a declaratory judgment in respect of the disputed domain name.
The complainant in that case, in a similar way to the Complainant in this case, had submitted that leaving the matter to be decided by the court would mean that the dispute would stand unresolved for an indefinite period, contrary to the strict deadlines and underlying purposes of the Policy which provides for prompt resolution of cybersquatting disputes. It had referred in particular to the case of Aubert International SAS and Aubert France SA v. T Co,WIPO Case No. D2008-1986. The respondent in that case had argued that decisions under the Policy are subordinate to decisions of national courts and the registrar could not implement any decision of the panel under the Policy until the registrar had received the ruling of the court.
The panel in DNA (Housemarks) decision found no compelling reason to proceed to a decision on the merits. The panel pointed out that in the Aubert decision (supra), there had been compelling dissent. The panel distinguishes the Tiara case saying that the court proceedings had been filed long after the UDRP proceedings had been initiated and the respondent had taken several steps as noted earlier.
The panel in DNA (Housemarks) casecontrasted the Tiara situation with the situation it had to deal with, which is essentially the same as in the present case. That panel declined to follow AMERICAN COLLEGE OF TRIAL LAWYERS v. John Givens,WIPO Case No. D2008-1813 where it appeared that the litigation was considered manipulative. The panel recognized in the DNA (Housemarks) case, as does the present Panel, that a request to suspend or terminate should not automatically be granted and could be subject to abuse by an unscrupulous respondent (see the quotation cited earlier).
The panel in the DNA (Housemarks) case considered that the respondent was not “gaming the system” in that it had selected a forum in an appropriate court for the independent resolution of the domain name dispute in a jurisdiction to which the complainant had submitted under paragraph 3(b)(xii) of the Rules. That panel also considered that the substance of the respondent’s court case being virtually identical to the issues in the proceedings under the Policy was a circumstance that pointed in favor of termination.
Moreover, such an identity of issues means that the situation is much the same as if the panel had proceeded to a decision and the losing party then elected to exercise its right under paragraph 4(k) of the Policy to contest the matter in an appropriate national court. In either event, the registrar could not transfer the disputed domain name until the court proceedings had terminated.
Whilst sympathizing with the complainant’s desire to determine its entitlement to a disputed domain name promptly, the panel in the DNA (Housemarks) caseconsidered that so doing would not advance a final resolution, assuming that the respondent continues to pursue its action in the courts and the registrar refuses to implement the panel’s decision on that basis. The court will be much better placed than the panel to decide the issue because it would keep a complete record. There would be the opportunity to hear oral testimony and “the chastening process of cross-examination”. Consequently, that panel granted the respondent’s request to termination which was preferable to suspension because the Policy the Rules and the Supplemental Rules make no provision for what may very well be a lengthy suspension. Nor do they indicate any mechanism by which this matter might, in practice, be kept pending and resumed or reinstated an undetermined day in the future.
This present Panel adopts with respect and gratitude the comprehensive reasoning in the DNA (Housemarks) case. It is applicable to the present case. What clinches the decision is the fact that the Registrar would not implement any decision to transfer the disputed domain name until the court proceedings in Stuttgart, Germany, 0had been resolved. 9. Decision
The Panel hereby orders pursuant to paragraph 18(a) of the Rules that this proceeding be terminated. This termination shall be without prejudice to the Complainant filing a new complaint under the Policy at any time following termination of the pending Court action in Germany but with prejudice if filed before that law suit is terminated.
Sir Ian Barker
Sole Panelist
Date: February 3, 2014
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