A reasoned decision that a dispute is outside the scope of the Policy has the effect of leaving the domain name with the respondent. It is also a juridical first look at the merits of the case based on the documentary and written testimonial evidence marshaled by the parties to support their respective claims. Both disputants in K & K Promotions Inc. v. Route 44 Leathers, D2011-0088 (WIPO March 10, 2011) exploit the name of Evel Knievel, a daredevil motorbike entertainer in the 1970s and 80s who was inducted into the Motorcycle Hall of Fame in 1999 and died in 2007. The Complainant holds a basket of EVEL KNIEVEL trademarks; the Respondent, allegedly received the blessing for merchandising “Evel Knievel” clothing directly from his friend Evel Knievel himself. The Panel summarizes the Respondent’s contentions and submitted evidence as follows:
As to the second element of the Policy, Respondent contends that he and Robert C. Knievel were close personal friends…. [That] he and Knievel entered into an agreement as early as 1997 which authorized Respondent to be the sole designer, producer and supplier of Evel Knievel branded merchandise…. [Further] that he registered the Disputed Domain Names in connection with this merchandising business…. [That in support he] provides photographs of two handwritten notes, one of which is dated March 7, 2003, allegedly drafted and signed by Evel Knievel himself … [and as] a result, Respondent contends that he possesses legitimate rights with respect to the Disputed Domain Names.
The Complainant acquired the trademark rights from Robert Knievel in 2007. There is, then, as is said in opposing a motion for summary judgment, a genuine issue of material fact, namely that the Respondent allegedly received permission to use the trademark “in connection with this merchandising business.” The Panel noted that in this case “the first factual predicate, registration in bad faith, is challenging because the exact date on which Respondent registered the Disputed Domain Names is uncertain.” In addition, there is also the issue of Evel Knievel’s authorization before he transferred his trademark rights to the Complainant. “During this time, Respondent has offered evidence that Respondent and Knievel were in a contractual relationship authorizing Respondent to make a bona fide offering of goods in connection with the Disputed Domain Names,” citing Schneider Electronics GmbH v. Schneider UK Ltd., D2006-1039 (WIPO October 21, 2006):
[W]here the parties have entered into and maintained a long-standing commercial relationship, Panels tend to impose on the Complainant a heavier burden of proof for bad faith, generally requiring more comprehensive evidence than that which may be necessary in the typical dispute between unrelated adversaries. At a minimum, the Complainant must provide full disclosure of the history of the relationship, and in particular, the relevant agreements and contractual terms which have governed their joint enterprise. Allegations of bad faith aimed at a former distributor or licensee can only be properly understood in the full context of their prior history.
Complainant cannot prevail in a UDRP proceeding because it failed to “address whether, prior to [its] taking ownership of the Marks, Respondent may have had such authorization and provides no information about Respondent’s prior relationship with Knievel.” Further “[e]ven if Complainant could establish that Respondent’s current use of the Disputed Domain Names were unauthorized and in bad faith, this alone is insufficient to satisfy the third element under paragraph 4(a).” On these facts the Complainant is not entitled to what in essence is summary judgment compelling transfer of the disputed domain names.