UDRP respondent “hostile” but panellist terminates case


A panellist in a cybersquatting dispute has terminated a complaint filed by cognac producer Rémy Martin, despite dealing with a “hostile” respondent.

Ian Barker was asked to suspend “casinolouisxiii.com”, which matches Rémy Martin’s trademark for Louis XIII, but upheld an opposition by Emedia Development.

Barker ruled on the Uniform Domain Name Dispute Resolution Policy (UDRP) case on February 3 but it was published on February 17.

Emedia asked Barker to terminate the complaint because it had already asked the District Court of Stuttgart to block the transfer of “casinolouisxiii.com”.

Panellists can suspend or terminate a UDRP complaint when there is a pending court case that began before the UDRP case has finished.  

Barker said he could not understand a document incorporating the respondent’s claims – sent by a German law firm – about the court case, because it was in German.

The respondent “refused” to provide a translation, Barker added, and was hostile to the UDRP itself.

“In several email communications ... 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.”

Barker continued, however, that he “has to rely on the information contained in the letter from the German lawyers, which clearly states that the proceedings have been issued”.

In its own submissions, Rémy Martin referred to a case called Tiara Hotels and Resorts LLC, v. John Pepin, in which the panellist ruled that “unscrupulous” respondents might try to abuse the UDRP by trying to suspend a case due to pending litigation.

The cognac company pointed out that Pepin – Emedia’s director – was the respondent in that case and that the panellist had refused to suspend the complaint despite pending German litigation.

But Pepin argued that if in this case Barker ignored the German legal proceedings, he would be showing “scant regard” for the Stuttgart court.

He added that the registrar confirmed that it would not transfer the domain name to Remy Martin until the court case had concluded.

Assessing the arguments, Barker said the German court will be better placed to resolve this dispute because it will keep a “complete record”.

“There would be the opportunity to hear oral testimony and ‘the chastening process of cross-examination’,” he said.

He added: “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, had been resolved.”

Flip Petillion, partner at Crowell & Moring LLP, said the decision was “wise”.

“18a of the UDRP rules is clear: when there is a court case, the panellist is free to go on. But it is wise not to because court cases can go into a much more in-depth analysis than UDRP and, even if a transfer is ordered [in a UDRP case], a registrar will await the outcome of the court case anyhow.”

Rémy Martin can still file a new complaint once the German legal proceedings have finished.

This article was first published on 18 February 2014 in World IP Review

remy martin, ian barker, wipo, udrp, Emedia Development

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