Recent Case Notes & Commentary

Effect of Court Proceedings on Claims under the UDRP

Yves Saint Laurent v. Xian Wen(文现)

WIPO Case No. D2016-2622 (February 16, 2017).


The Complainant was the famous Yves Saint  Lauren fashion house and it was trying to obtain the domain name <yslkings.com> which embodied its trademark YSL and which had been registered by an individual in China, Xian Wen. The YSL trademark was, of course, very well known and one of the ultimate celebrity brands.  


The domain name resolved to an English language website that advertised and offered for sale handbags under the YSL Trade Mark and also under trade marks of the Complainant’s competitors, including  HERMÉS owned by the famous Hermès company in Paris.


Hermes did not take very kindly to this and started a trademark infringement court action against the same Chinese individual who was the Respondent in the UDRP proceeding. The court action was in the United States District Court, Southern District of Florida , but YSL was not a party to that action.


There were two registrars of the domain name. On January 13, 2017, the First Registrar (the registrar at the time the Complaint was filed) informed the Parties and the provider of the arbitration services, WIPO, that the domain name had been transferred to a holding account at the Second Registrar due to a court order in the Court Proceeding  in Florida.


A few weeks later WIPO appointed the panelist in the UDRP proceeding. The question then arose in the UDRP proceeding as to what to do with the Florida court case; go on as usual with the UDRP proceeding or halt it, perhaps temporarily, until the Florida case was finalised, as the order made in that case was only an Ex Parte Temporary Restraining Order?


The panel looked at the Policy and the Rules, which generally allow court proceedings to be taken, although there are UDRP proceedings on foot. But what to do with the UDRP case? The pivotal Rule is Rule 18(a) which gives the UDRP  panel the discretion either to suspend, terminate or continue the UDRP proceeding where disputed domain name is the subject of other pending legal proceedings, i.e. in court.


The panel might say that the UDRP dispute cannot be separated from the court proceeding, and may terminate or suspend it until the court proceedings are finalised.


On the other hand, the panel might say that the UDRP proceeding should continue, as it is an entirely separate matter.


If the court proceedings are over and finalised, the UDRP panel could decide what weight to give to the court decision in reaching conclusions in the UDRP matter.


As the lawyers say, correctly, it will all depend on the circumstances of the individual case.


In the present case, the Panel felt that the UDRP case could be evaluated separately from the court proceeding as Hermes’ rights could not effect Yves Saint Laurent’s rights under the UDRP; after all YSL’s trademark was embodied in the domain name and Hermes’ was not . So, “in all the circumstances”, as the panel said, the UDRP dispute should proceed, even although the Florida court case was still underway.


The Panel was clearly reluctant to speculate on how the Florida case would be finally resolved. The Panel seems to have had the same doubts as we have about this. Hermes might complain that its trademark was being used on the website to which the disputed domain name resolved, presumably to sell counterfeit Hermes products, but how does that result in an order that the domain name be transferred to Hermes? Whether it does or it does not, YSL should still be entitled to a transfer of the domain name to itself if it could make out its claim under the UDRP.


The Panel then went on to the usual UDRP analysis and ordered the domain name to be transferred to YSL

This case, then, is an illustration of how a UDRP proceeding may continue to finality, although there are still court proceedings on foot that concern the same domain name.


One can only wonder what the Florida court will say when it finds out that the domain name it was about to transfer from Xian Wen to Hermes, is now owned not by Xian Wen but by Yves Saint Laurent.