Japanese Intellectual Property Arbitration Center (JIPAC) sets first precedent in allowing English as the language of proceedings in a domain name dispute (JP-DRP)
In a breaking decision, JIPAC accepted English as the language of proceedings for the first time, setting a useful precedent for ulterior litigants.
The first series of argument was standard when it comes to domain name dispute resolution policies: they relied on use of the Latin script by the respondent both in the disputed domain name and the top-level-domain (TLD); in this case, the term “erborian” followed by the “.jp” extension. In addition, the respondent had registered a considerable number of other domains – the majority of which were reproducing well-known marks – in the Latin script. The respondent had also been involved in at least 16 cases before WIPO concerning marks or names pertaining to markets where, to the exception of China, languages making use of the Latin alphabet are used. Emails written in English had been exchanged prior to submission of the case with a view to purchase the domain, and the price discussed in USD. Finally, the circumstance that neither party was a Japanese national was put forward.
In an interesting development, the Panel explains in details (1) their view on how such requests should be interpreted and handled and (2) applies it to the circumstances of the case.
1. Panel opinion on the language request principle
Article 11., a. of the JP-DRP Rules (as revised on June 15, 2020: ip-adr.gr.jp) states that the language of the proceedings shall be Japanese. However, it gives the panel authority to decide otherwise based on circumstances. The panel explained what these circumstances were.
First, the parties may have agreed to choose another language: in this case, the panel specified that it had to be satisfied that it could “verify accuracy of the documents” submitted “in the agreed language directly.” At the moment, only English satisfies this requirement. If the documents propose different languages, the panel has discretion to choose one or reject the request. Such documents must be notified to JIPAC before the appointment of the panel.
The panel then elaborated on what should be considered in handing down the decision absent an agreement between the parties.
From the outset, it excluded the case where the respondent denied such a request: this would amount to a de facto dismissal of the request, save “irregular special situations.” This means that the request will only have chances to succeed absent a response from the respondent. The panel is of the opinion that the request should be accepted in “exceptional circumstances” only, given that Japanese is otherwise the natural language of the proceedings “since the proceedings are governed by Japanese Law.”
Surprisingly, the panel referred to the principle that it shall be impartial and independent (art. 7 of the JP-DRP Rules) to justify that the final choice should be fair to both parties: according to the panel, granting the request would be de facto unfair should the respondent not understand the language designated in the request.
Instead, the panel could have referred to art. 10, b. of the JP-DRP Rules which reads: “in all cases, the Panel shall make an effort to ensure that the Parties are treated with equality and that each party is given a fair opportunity to present its position.” It can be noted that the UDRP Rules’ phrasing of this provision is slightly more forceful as it reads that the panel “shall ensure” the same, as opposed to simply “mak[ing] an effort.” This subtle difference could grant more leeway to panelists in their weighing of evidence. Art. 10, (b) and 11 of the UDRP Rules are usually used complementarily, as par. 4.5 of the WIPO Overview illustrates. A similar reference could have been more relevant in the case at hand, considering the fact that art. 7 of the JP-DRP Rules would rather appear to be directed solely at preventing panelists interested in the dispute to participate.
Nevertheless, the indicia that were used by the panel were standard according to WIPO practice. For example:
i) Language of communication between the parties;
ii) Language of previous DRP proceedings (UDRP or other) “filed by a party other than the party who filed the request”;
iii) Language used in the parties’ websites, SNS and other media;
iv) The parties’ permanent address or domicile (“in particular, whether a party other than the requesting party is operating (or operated) its business with an active base in Japan.”)
Interestingly, the panel specified that “the fact that the parties are not Japanese nationals may not be considered as an important factor in principle, since Japanese nationality is not always linked to whether the parties” understand Japanese.
In essence, what can be extracted from the panel’s rationale is that the requesting party should explain both (i) that the respondent has limited abilities in Japanese and (ii) that the respondent “has enough ability” to communicate in the designated language.
2. Application to the case at hand
Since no agreements had been reached with the respondent, this request fell into the second case: factual elements thus had to be presented to the Panel.
The panel accepted the evidence presented in the language request (see arguments above).
Regarding the offer of the disputed domain name on selling platforms, it took note that these platforms were written in English. It also highlighted how the respondent had “never denied English as the language of proceedings” in the previous cases it had been a part of before other dispute resolution centers, and how in one of these cases, “the Panel decided English as the language of the proceedings despite that the language of the registration agreement was Chinese.” It may also be worth noting that the panel did not consider the mention on the Whois excerpt that the Registrant’s country was “China” as evidence that the Registrant was a Chinese national.
JIPAC, JP2021-0001, L’occitane International SA, Luxembourg, succursale de Plan-les-Ouates v. Ye Li, erborian.jp, May 11, 2021, panelist: SATO, Keita, transfer.