When does a UDRP panelist go too far in helping a complainant in a UDRP proceeding? In the curious case of Hôpitaux Universitaires de Genève v. Aydin Karadeniz, heard before WIPO Panelists (Case No. D2016-1620) which was a fight over the <hug.com>, <hug.net>, and <hug.org> domain names, the Panelists did their own research to supplement the record in order to find that the domain name registrant had rights and legitimate interests in the disputed domain names, stating:
The Panel has been able to verify from its own searches on the relevant websites that a corporation under the name “Hug.com” was registered in California on the application of a person with the Respondent’s name filed on August 4, 2014, and has since been dissolved; and that an application was made in the name of this company to register the mark “HUG” at the USPTO on August 25, 2014, for the services stated in the Response, that this application was published for opposition on January 20, 2015, and that it was abandoned on October 19, 2015. The Panel has also verified that the pages recorded by the Internet Archive at “www.hug.com” between September 23, 2014 and March 16, 2015, are in the form of the “Coming Soon” page exhibited by the Respondent.
Usually it is the job of defense counsel to provide the record for the defense and the neutral Panelists job to evaluate the record and come to a fair conclusion. Since what the Panelists independently located and added to the record was apparently necessary enough to be mentioned in the Decision, one is left with the feeling that in this case the Complainant’s counsel was up against both the Respondent’s Counsel and the Panel itself (one is also left wondering if the Panel intended to provide a means to avoid any adverse UDRP to any party that forms and abandons a company and files and abandons a trademark).
Importantly, the Panel went further and apparently based, at least in part, the evidence that it gathered on its own, found that Hôpitaux Universitaires de Genève brought the complaint in bad faith and abused the UDRP proceedings. In reaching this conclusion, the Panel also relied on the Complainant’s failure to send a demand letter in advance (a tactic which can cause a cyberflight by the way). Nowhere in the UDRP Policy that the Panel was supposed to be interpreting is there a requirement to send a demand letter in advance of a UDRP complaint. Further, what would the purpose of the demand letter have been, given that the domain name registrant already knew of the Complainant’s rights in a “HUG” mark, which is why the Respondent was attempting to sell the domain name to that particular party for tens of thousands of dollars? The Panel offers no justification for requiring a demand letter (at pains of being found to be abusing the UDRP proceedings) nor does it offer any clue as to what the letter should have said.
This is not to say that the Complainant should have prevailed. It appears to me that there was enough in the record without the Panelist’s investigative sojourn to plausibly find for the Respondent, especially given the widespread association of “Hug” with a form of exhibiting human affection with a far lesser association with a hospital in Geneva along with no use for ads or the like for medical services—just an advertisement for sale of the domain names. That said, why muddy the waters as a Panel by undertaking to help out the defense? Why chill use of the UDRP by reading into it additional unrequired requirements which, if not met, will trigger a finding of abuse of the system?
In other words, the Panel should not “hug” one party at the expense of another.