Tuesday, 7 February 2017

On the significance of UDRP Proceedings before Greek courts

In the course of trademark infringement proceedings, a recent judgment of the Athens CoA was confronted with a res iudicata plea by the appellant, on the grounds of a Panel decision rendered by the Asian Domain Name Dispute Resolution Centre. It is the first time a Greek court is called to examine the legal nature of a decision issued under ICANN’s Uniform Dispute Resolution Policy.
Athens CoA Nr. 2288/2016, available in the data base of the Athens Bar 

THE FACTS: The parties are the famous ALIBABA GROUP HOLDING LIMITED (claimant / appellee), and a limited liability company situated in Attica district. The claimant initiated proceedings in 2011 before the Athens First Instance Court. The action was partially sustained three years later. The respondent lodged an appeal in April 2015. The hearing took place November 2015, and the judgment was published September last year.
I guess there is no need to present the claimant. It holds the domain name <alibaba.com>.   The trademark ‘alibaba’ is globally protected. The respondent proceeded in 2004 on the registration of the domain name <alibaba.info>. Upon notice almost 7 years later, the claimant filed the action in question before the Athens court. There is also no need to enter into details as to the specifics of the claim and the pleadings of the respondent. It was a classical action for trademark infringement. I shall focus only on one point raised by the appellant: The issue of bad faith was examined in the course of UDRP proceedings before the Asian Domain Name Dispute Resolution Centre. By virtue of a decision issued by the Hong Kong branch in 2011, the Three-Member Panel considered that no bad faith domain name registration, therefore no trademark infringement occurred. 

THE RULING: The Athens CoA ruled that the decision rendered by the Hong Kong Online Court is the product of a process alien to either conciliation, or arbitration, or even mediation proceedings. Therefore, it may not serve as a res iudicata defense. Especially with regard to arbitration, the UDRP lacks features which are crucial in the course of arbitration proceedings. For instance, there is no mutual arbitration agreement; no common selection of the Panelist; and last but not least, the decision is not binding for the parties, who may reopen proceedings before national tribunals. Hence, access to state courts is unhindered, which is exactly what the claimant / appellee did. The court continued by evaluating the UDRP Rules as legally non-binding. Finally, it stressed out that the Panel’s decision may be simply taken into account by the state court as one out of many pieces of evidence. In other words, it has no superior value compared to the rest.  

COMMENT: The judgment of the Athens CoA is clearly going towards the right direction. However, it would have spared the court precious time, had it simply referred to Art. 4 k UDRP Rules, which reads as follows: ‘k. 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 concluded. 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 a 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’.

The interesting part of the case at hand lies in the fact that the decision of the Panel dismissed the complaint. As evidenced by the provision above, no time-limits are set for the complainant. Hence, solely by referring to Art. 4 k UDRP Rules, the court could have discarded the res iudicata argument.
A final word towards a different, however similar direction: Unlike the UDRP Rules, the .eu ADR Rules set time limits for both parties: Pursuant to Art. 22 para 13, ‘the results of ADR shall be binding on the parties and the Registry unless court proceedings are initiated within 30 calendar days of the notification of the result of the ADR procedure to the parties’. Hence, if the losing party does not challenge the decision, the latter will become binding. Thus the question: What would be the reaction of the Greek court, if the appellant had produced a decision by the .eu ADR court, dismissing the complaint of the claimant? Would it be possible for the court to follow the same path without second thoughts? In my view, this would not be easy, especially for a national court of an EU Member State: To deny the effects of an ADR procedure established by a EU Regulation, i.e. a piece of legislation with immediate force in the EU Member States, requires a thorough analysis. Conclusions could have been drawn by a request for a preliminary ruling 10 years ago [Reference for a preliminary ruling from the Arbitration Court attached to the Economic Chamber of the Czech Republic and Agricultural Chamber of the Czech Republic (Czech Republic) lodged on 26 February 2007 - Reisebüro Bühler GmbH v Dom.info e.K., Sebastian Dieterle] which submitted the following question: Is the Arbitration Court for the resolution of .eu domain name disputes attached to the Economic Chamber of the Czech Republic and Agricultural Chamber of the Czech Republic (Czech Arbitration Court), established pursuant to Regulation (EC) No 874/2004, 1 empowered to refer questions to the Court of Justice for a preliminary ruling under the second paragraph of Article 234 EC? An answer did not come from the CJEU, because the case was removed from the register.
For more info on the .eu ADR court, you could check my article [Online Dispute Resolution: The .eu ADR Paradigm], in: here , published in: Romanian Review of Arbitration 2015 (9), Nr. 2, pp. 11-20.


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