WEDNESDAY, 27 MAY 2009
To decide or not to decide? That is the question
An interesting example of procedural ambivalence in the jurisprudence of WIPO’s panels regarding domain name disputes can be found in Case No. D2009-0405 (Google Inc. v. Herit Shah) regarding the domain name ‘googblog.com’. Google Inc. filed a complaint with WIPO Arbitration and Mediation Center in order to have the disputed domain name transferred to it. Google, relied, inter alia, on its NASDAQ financial stock ticker since 2004 “GOOG” to strengthen its confusing similarity claim for goog(blog).(com). Initially, the respondent didn’t respond. However, after the panelist was appointed, the respondent sent the WIPO Arbitratio
n and Mediation Center apologizing and admitting the validity of the complaint.
So, the procedural issue was whether the panel should directly transfer the domain name to Google or decide the case on its merits. Apparently the jurisprudence is divided on this particular issue. As set out in the decision, in Disney Enterprises, Inc. v. Elmer Morales, NAF Claim No. FA 475191 (June 24, 2005) and Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., NAF Claim No. FA 212653 (January 13, 2004) and Boehring
er Ingelheim International GmbH v. Modern Limited – Cayman Web Development, NAF Claim No. FA 133625 (January 9, 2003). the respective Panels decided to forego any legal analysis and accept the complaints since the respondent in each case had also accepted them.
However, in Graebel Van Lines, Inc. v. Texas International Property Associates – NA NA, NAF Claim No. FA 1195954 (July 17, 2008), the Panel formally reviewed the case, even though the respondent has admitted the validity of the complaint. The same occurred in Barrow Industries Inc. v. Texas International Property Associates – NA NA, NAF Claim No. FA0812001239732.
In this particular case the Panel took the fast lane. It was noted that there was “… an unexplained inconsistency between the sophisticated language with which the Respondent rebuffed the pre-Complaint letter of demand which included a suggestion from the Respondent for negotiation of a co-existence agreement between the parties, and the perhaps questionable May 2, 2009 email from the Respondent in which it apparently sees the error in its action, apologises for its mistake and consents to the transfer of the disputed domain name to the Complainant.”
Still, the Panel held that “…in this case that the consent-to-transfer request replaces the need to assess the matter under the elements of the Policy”.