Despite Long Dissenting Opinion, Youi.com Saved In UDRP Against Claim Of TM Holder, Youi Of Australia

A three member UDRP panel ruled by 2-1 in favor of the domain holder of Youi.com against  Youi Pty Ltd. of Queensland, Australia, which was represented by Melbourne IT.

The domain name was parked and was acquired by the domain holder after the Australia company registered its trademark but a majority of the panel did not find bad faith in the registration as the domain holder was located in Europe and would not have knowledge of the Australian Trademark but the panel noted that “this case is a borderline case and it is, in the majority of the Panel’s view, no clear case of cybersquatting”.

In the dissenting opinion John Swinson wanted to impose knowledge of the trademark on the domain holder seemly because the domain holder is a domain investor and apparently doesn’t understand the value of a LLLL.com domain.

Here are the relevant facts and findings by the panel:

“The Complainant is based in Australia and provides consumers with home building, contents and car insurance products.  The Complainant’s business, a general insurance company, was first registered in January 2007, while its services were officially launched in early 2008.

At present, the Complainant has subscribed to 334,255 insurance policies, and receives approximately 60,000 requests for quotes per month, out of which approximately 45,000 are started online.  The Complainant’s current spendings to promote the YOUI brand awareness are in excess of fifteen million Australian Dollars per annum.

“The Complainant is registered owner of the Australian trademark registration no. 1202048 YOUI, applied for on October 2, 2007 and registered in May 12, 2008″

“The Complainant is also the owner of more than 25 domain names containing the YOUI Mark or variations thereof, inter alia <youi.com.au> and <youilife.com.au>.”

“The disputed domain name was acquired by the Respondent in January 2009 and has been used in connection with parking websites, temporarily including websites showing insurance ads.”

“With regards to the bad faith registration element, having carefully considered the facts contained in the case file, the majority of the Panel finds that the Complainant has not provided sufficient evidence with regards to the Respondent’s actual knowledge of the Complainant and its trademark rights at the moment of time the Respondent acquired the disputed domain name and that, therefore, the Complainant failed to meet its burden of proof in this regard.”

“The Complainant contends that at the time of the Respondent’s acquisition of the disputed domain name, the Complainant’s trademark had been registered and that the Complainant had already established a large online presence and name under the brand YOUI, for which it was awarded and recognized in 2009.”

“Furthermore, the Complainant states that its services were officially launched in Australia in early 2008 and that it spent a total of AUD 6.048,82 in Google advertising from September 2008 through November 2008, while it currently spends in excess of fifteen million Australian Dollars per annum to promote the YOUI brand awareness. ”

“However, on the record of this case, the Complainant did not provide any evidence with regard to the actual scope of its business and the awareness of the public regarding the YOUI Mark on or around the time of the acquisition of the disputed domain name by the Respondent in January 2009 (e.g. number of customers, business volume, spendings on advertising other than Google, if any, actual traffic numbers, number of requests for quotes per months).”

“Based on the facts and evidence provided by the Complainant, the Respondent may not necessarily have been aware of the Complainant. ”

“In this regard, the majority of the Panel especially takes into account that the Respondent is located in Europe (Luxembourg), where the Complainant does not claim to do any business, that the second level of the disputed domain name is not highly distinctive (besides the generic meanings alleged by the Respondent, the majority of the Panel notes that the disputed domain name merely consists of the words “you” and “I”), and that the acquisition of the disputed domain name postdates the Complainant’s launch in Australia only by very few months.”

“It is also noteworthy that the content of the website available at the disputed domain name showed advertisings related to the Complainant’s business only 16 months after the acquisition of the disputed domain name by the Respondent and only for a limited period of four months, which casts into doubt whether the disputed domain name was in fact registered with the intent to profit from traffic intended for the Complainant’s website. ”

“Furthermore, as the content of parked websites is in general automatically generated, the majority of the Panel finds it hard to draw inferences from the content of the website available at the disputed domain name with regard to the bad faith registration element.

“Consequently, the majority of the Panel concludes that the third element of the Policy has not been met on the present record in these Policy proceedings and that the Complaint must be denied.”

However one of the Panelist’s,  John Swinson did not agree with the majority of the panel and issued a Dissenting Opinion.

“With respect, I disagree with the majority in relation to the third element of the Policy.”

“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. ”

“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 (<metart.com>, <lavalamp.com>, <paydayamerica.com>) and disputes where the Respondent was successful (<kaleidoscope.com>, <gaylive.com>, <shoppers.com>, <cheapautoinsurance.com>, <starmail.com>, <thundervalley.com>).”

“I find that the disputed domain name was registered to take advantage of the reputation of the Complainant’s business so as to generate revenue from sponsored searches. ”

“The Respondent may not have had actual knowledge of the Complainant (and I even doubt this), but would clearly have been aware of the traffic that the disputed domain name was generating at the time it decided to acquire the disputed domain name.”

” It would be unbelievable that a sophisticated domain name acquirer such as the Respondent would not have reviewed traffic details and search engine results before valuing and acquiring the disputed domain name.  In my view, this traffic was generated by users looking for the Complainant’s “youi.com.au” website, but who mistyped and left out the “.au” suffix from the domain name.  ”

“If the Respondent had conducted a simple search using any search engine at the time the Respondent acquired the disputed domain name, the Respondent would have clearly realized that the Complainant existed and had trademark rights in YOUI at that time.  The fact that the Complainant cannot prove that the Respondent did not actually notice references to the Complainant in such search results is not fatal to the Complainant’s case.”

“Moreover, the Respondent’s stated reasons for acquiring the disputed domain name are not believable. ”

“The Respondent appears to assert that the domain name was acquired because of its generic value, being the name of a region in South Korea or a word or phrase in Japanese.  The Respondent did not present any evidence that in the period that it owned the disputed domain name that the disputed domain name was used in any way associated with this alleged generic meanings.  The Respondent says:

“Youi is a region of North Chungcheong in South Korea.  There are over 736,000 Google results for YOUI + Korean. Korea has close similarities with China.  They share most of the same character set  (Kanji).  A Google search for Youi+China results in over 3,190,000 results. In Japanese – which also shares the same character set as Chinese, “youi” means “preparation;  readiness;  arrangements”.  An example of a phrase using Youi is “学校に行く用意はできた” which means:  “Did you get ready for school?”.

As such, the term lends itself to a wide variety of uses, none of which have anything to do with insurance.”

“Tellingly, the Respondent also states:  “The Domain Name was registered because it was a 4-character domain and the search results showed it to be very popular without regard to Complainant.”

“This appears to be an admission by the Respondent that it acquired the disputed domain name because of its popularity in search results, such search results no doubt including references to the Complainant as well as the region in South Korea.  If the Respondent acquired the disputed domain name simply because it was a 4-character domain name, without looking any further, this would fall within the willful blindness doctrine discussed above.”

“In considering lack of actual knowledge, the majority opinion states that the Respondent is located in Luxembourg, and that this assists in reaching the conclusion that the Respondent would not have been aware of the Complainant.”

” I find this unpersuasive.”

“First, the Respondent’s corporate domicile is in Luxembourg, but there is no evidence that the Respondent’s officers, shareholders or employees are located there.  For all we know from the record in this case, the Respondent’s key personnel could reside in Brisbane, Australia (the location of the concerned registrar Fabulous.com in this instance).”

” Second, this is not the case of an unsophisticated business registering the dispute domain name for a legitimate business purpose, where likely knowledge of the Complainant is a relevant factor.  Here, the Respondent is a sophisticated online business, with knowledge of trademark and cybersquatting legal issues.  Third, the Respondent could have easily conducted online searches from Luxembourg, before acquiring the disputed domain name, that would have returned results about the Complainant, and as stated above, it most likely did so.”

 

 

Comments

  1. BrianWick says

    A round about way to enforce the US 14th Amendment of Equal access.

    If a guy in australia or maybe in the us reserved it he would have lost it probably – even though all the other circumstances would have been the same – that is why the entire bad faith element is shaky – and ACPA does not go down that path at all becausew of the us 14th amendment.

  2. says

    Furthermore, as the content of parked websites is in general automatically generated, the majority of the Panel finds it hard to draw inferences from the content of the website available at the disputed domain name with regard to the bad faith registration element.

    Few more recent decisions also favored domain holder with respect to parking! Are the Internet ad server vendors putting in some weight somewhere? Not that I am complaining :)

    On the other hand, there’s a case up against one such big brother, for serving competitors’ ads in the search results ;) In AU, where else?

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