In this case study video about the domain name <ibmhistory.com>, I explain that although most decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) are in English, English is not the default language for all UDRP cases.
But knowing when and how to argue that a proceeding should be conducted in English, if that’s what a trademark owner prefers, can be important for both time and money, as IBM obviously knew when it filed its complaint for the domain name <ibmhistory.com>.
As I discuss in the video, the UDRP Rules say that “the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
In the <ibmhistory.com> case, the registrar appears to be based in China and has a registration agreement in Chinese. But IBM filed its UDRP complaint in English and requested that the UDRP proceeding be conducted in English.
So the issue was whether the panel should accept the request for English or require that it be conducted in Chinese.
Fortunately, of course, this is not the first UDRP case to address this issue. So the panel had plenty of precedent to draw in deciding how to proceed. And, ultimately, here’s what the panel wrote:
On the record, Respondent appears to be a Chinese resident and is thus presumably not a native English speaker. However, considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain name includes Latin letters (“ibm”) and particularly the English word (“history”), rather than Chinese script; (b) the disputed domain name resolves to [a] website which contains both Chinese and English content; (c) the Center has notified Respondent… in English and Chinese of the language of the proceeding and the Complaint, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (d) the Center informed the Parties, in English and Chinese, that it would accept a Response in either English or Chinese, and the Panel would have accepted a response in either English or Chinese but none was filed; and (e) Complainant is a company from the USA, and Complainant will be spared the burden of working in Chinese as the language of the proceeding.
Accordingly, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
While this turned out well for IBM, not all trademark owners get their language of choice, because the facts of different cases will vary and not all of the factors present in the <ibmhistory.com> case will apply. And, sometimes, other factors may come into play, such as if there are prior UDRP cases in which the registrant has been involved or if the registrant has communicated with the trademark owner prior to the case being filed.
When I file UDRP complaints for my clients, I always check first to see what the language of the registration is, and if it’s not English (the only language I can speak), then I will evaluate before filing a UDRP complaint whether I can make a strong and credible argument that the case should still proceed in English.
