Google Loses UDRP On Youtube.com.pe

In a UDRP decision just handed down Google lost its case to acquire the domain name youtube.com.pe

.Pe is the ccTLD (country code) for Peru.

The domain holder was a company known as “googel ltd. which is located at Two Stooges LLC, China.”

(The original decision was written in Spanish and we used Google translate to translate the decision to English)

Basically the panel held that the domain name registration which predated the trademark application of Google of YouTube in Peru gave the domain holder rights to the domain although Google trademarked the term in the US prior to the domain registration.

The panel also went into a detailed discussion of the Peru and the American General Convention Trademark and Commercial Protection of 1929 (Washington Convention), of which Peru and the United States are members which would seem to provide for Peru to recognize the TM of the US but the panel disregarded the treaties language stating that “evil can be recognized more protection to nationals of another State that does not meet the formal requirements of the laws of Peru, it would mean an act of discrimination against nationals and residents in Peru, a fact that is not in the spirit of equal treatment to nationals and residents in Peru and in the other Contracting States.”

Here are the fact and findings of the one member panel:

“The Complainant’s YOUTUBE trademark holder in classes 9.35, 38.41 and 42 of the Official Nomenclature in the Republic of Peru, being the oldest record issued on 7 May 2007.

“Furthermore the Complainant’s YOUTUBE trademark holder in various classes of Official Nomenclature, with the first use in commerce since April 24, 2005 and filed on January 30, 2006 before the Patent and Trademark Office U.S. (USPTO) and holds the YOUTUBE mark in Argentina, Colombia, Spain and the European Union.

“The Complainant owns the domain name <youtube.com>, registered since 2005.

“The domain name subject of this dispute was registered on 29 May 2006″

“Pursuant to the Policy, the circumstances must be analyzed to determine whether to order the transfer of a domain name to the Complainant are as follows:

“1. The domain name is identical or similar to the point of creating confusion with respect to:

a. Trademarks in Peru, so pre-registration of domain and on which the complainant has rights; or

b. Denominations or indications of origin protected in Peru, or

c. Names of individuals or pseudonyms publicly recognized in Peru, or

d. Names of official bodies of the Central Government, Regional or Local in Peru;

e. Names registered in public records of private institutions of Peru, and

2. The applicant for a domain name has no rights or legitimate interests in the domain name;

3. The domain name was registered and used in bad faith. ”

Examination of these three circumstances set effects will cancel the registration or transfer of ownership of the disputed domain name.

As shown in the text cited, should consider the three circumstances for a conviction on the Right Holder’s domain name in dispute or the Complainant and verify compliance of the same, for purposes of determining whether to order the transfer of ownership of the disputed domain name.

“The Complainant argues in its request that the expert must base its decision on the Policy, the Rules, the general rules and principles of law that it considers relevant and states that are part of the rules applicable treaties signed by Peru and the American General Convention Trademark and Commercial Protection of 1929 (Washington Convention), of which Peru and the United States are members.

“Indeed, the Constitution of Peru states that the treaties concluded by Peru and force are part of national law and the Washington Convention is one of them.

“This first article of the Treaty establishes the principle of “national treatment”, under which each State has to apply to nationals or residents of other states national law without discrimination, giving them treatment no less favorable than it gives their own nationals or residents.

“As it expressly stated in Article 3 of the Convention of Washington “(…) any mark duly registered or protected in one of the Contracting States shall be admitted to registration or deposit and legally protected in the other Contracting States, subject to compliance of the formal requirements established by national law of those States. ”

“National law in this case is Decision 486 of the Cartagena Agreement Commission, derived from a standard integration treaty, part of Peruvian law, which, in its Article 154 provides that “[...] the right to use solely of a mark shall be acquired by registration of the goods to the competent national office. ”

“An interpretation of section three above, in accordance with the provisions of the principle of “national treatment” enshrined in Article 1 of the Washington Convention, it is clear that as a principle of trademark law that only Andean record is establishing rights, unlike the system governing the United States of America, evil can be recognized more protection to nationals of another State that does not meet the formal requirements of the laws of Peru, it would mean an act of discrimination against nationals and residents in Peru, a fact that is not in the spirit of equal treatment to nationals and residents in Peru and in the other Contracting States.

“It is for these considerations that the expert can not accept the arguments presented by the Complainant regarding the implementation of General Inter-American Convention for Trademark and Commercial Protection of 1929 to the present controversy.

“The expert considers it necessary and identify over time those facts in this dispute. So we have identified the following facts:

a) On 29 May 2006, registered the domain name in dispute <youtube.com.pe>, the same as that in force in favor of the Contractor.

b) On 7 May 2007 is the earliest date of registration of the mark in Peru YOUTUBE obtained before the Office of Distinctive Signs INDECOPI. The date set by the Complainant, the December 14, 2006, the date on which the mark was applied for registration to INDECOPI can not be taken into account since, in the Peruvian trademark system, the registration of the mark is establishing rights and the exclusive right to their registration is born alone, not before, both dates being in any case, after registration of the domain name in dispute.

c) Based on the considerations set out in section 6.2, the date of first use in commerce and the records of the YOUTUBE mark in the United States and the rest of the world and its status as a brand with a Extended knowledge in Internet and worldwide, do not meet the first requirement under the Policy, which makes no sense that the expert rule on the other two circumstances mentioned in Article i. Policy.

So, the Expert considers that the trademark registrations obtained in Peru invoked as a qualification for the start of a dispute must have been obtained prior to the date of registration of the domain name in dispute, in strict compliance with the Policy and its Regulations.
7. Decision

For the foregoing reasons, the Expert Request denied.””

 

Comments

  1. says

    “The domain holder was a company known as “googel ltd. which is located at Two Stooges LLC, China.”

    (The original decision was written in Spanish and we used Google translate to translate the decision to English)”

    That had me in stiches, Hilarious!

  2. John Berryhill says

    Mike,

    It is inaccurate to characterize this as a “UDRP” decision.

    The .pe ccTLD doesn’t use the UDRP.

    Instead, they use a variation of the UDRP, which is limited to trade and service mark rights in Peru which are senior to the domain name.

    Looking at the .pe dispute policy, you’ll find the first criterion stated as:

    http://punto.pe/archivos/Politica_de_Solucion_de_Controversias4.pdf

    1. El nombre de dominio sea idéntico o similar hasta el punto de crear confusión con respecto a:

    a. marcas registradas en el Perú, de manera previa al registro de dominio y sobre la que el reclamante tenga derechos;

    It’s interesting that they put that chronological condition in the first criterion of the policy “de manera previa al registro de dominio” (“before registration of the domain name”)

    If this had been decided under the UDRP, it is likely that a panel would have found that Google had developed strong common law rights before registration of the domain name.

    However, the .pe dispute policy is limited specifically to Peruvian registered rights than the UDRP, at least with respect to trade or service mark rights. They have an interesting list of things under the first criterion, including personal or fictitious names (such as performers) who are well known in Peru.

    But there weren’t too many ways this could have gone, despite Google’s Peruvian counsel giving a good try at warping the meaning of the relevant treaty.

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