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Evidentiary Demands in a UDRP Proceeding

To succeed in a UDRP case parties must pay attentiion to the evidentiary demands of the process. Complaints are dismissed or denied for three reasons, either complainant 1) lacks priority for its trademark over the domain name; 2) failed to marshal evidence sufficient to prove abusive registration, or 3) respondent has rebutted complainant’s allegations that it lacks right or legitimate interest in the domain name. In most instances complainants prevail because the respondent is condemned by the composition of a domain name registered subsequent to complainant’s acquisition of its trademark. For example, if an accused domain name contains complainant’s well known or famous trademark targeting may be inferred. The docket is full of such instances: <nortonantivirus.com>, <sonytravels.com>, <directvnet.com>, <ftdflowers4less.com>, <michelinrunflattires.com> and <siteco.lighting>. In these last three examples the addition of modifiers or in the case of dot lighting add to the likelihood of confusion because “flowers4less”, “tires” and “lighting” relate directly to the products associated with the trademark. The docket is also full of trademarks composed of dictionary words or compounds.

In contrast, no targeting can be inferred where the domain name registration antedates acquisition of trademark––<countrygirl.com>, LML Investments LLC v. P.A. Gordon, FA1407001571756 (Nat. Arb. Forum September 9, 2014), and <nuvotv.com>, SiTV, Inc. d/b/a NUVO TV v. Javier F. Rodriguez, D2014-1143 (WIPO August 14, 2014) are recent examples. SiTV is a particularly precarious claim because it results from a self created predicament, namely rebranding itself without owning the corresponding domain name. The Panel was charitable in not finding reverse domain name hijacking. There are multiple examples of two, three or four letter domain names complainants have claimed as acronymic trademarks but have been unable to prove abusive registration; “gnc,” “tvs,” “qiq” “msc” and “xxnx” are recent examples. In all these there is either impossibility of producing evidence or possible but insufficiency of evidence.

However, there are cases in which a well known trademark can be discerned in the top level domain that demands more from the complainant than simply pointing that out. An example of this is in another “Michelin” case, Michelin North America, Inc. v. Austin Fleming, FA1408001575871 (Nat. Arb. Forum September 17, 2014) involving <michelinaoliveoil.com> (bold added to emphasize the trademark). Although the trademark is discernible in the domain name the Panel stated it was not clear to him whether Respondent (who defaulted in appearance) was targeting Complainant because the TLD could also be read as “Michelina olive oil.” “Michelina” is not “Michelin.” Since the domain name is inactive and there is no evidence “good or bad” the burden of proving bad faith falls upon Complainant, and “the Panel finds that this burden has not been met.”

The fact that a trademark registration post-dates the domain name is not conclusive of course that complainant lacked priority if it could prove an earlier common law right. Timing is particularly important in demonstrating priority by common law but the burden is significantly greater than proving priority by registration. In LML Investments Complainant’s proof fell short. Although it had been using the COUNTRY GIRL mark in commerce since 2004 in connection with the sale of clothing, accessories, paper goods, etc. and latterly obtained a trademark registration in 2008, the domain name was registered in 1998. The fact Respondent was attempting to sell the disputed domain name for an amount in excess of its out-of-pocket costs is irrelevant:

[S]ince . . . Respondent has rights in the domain name at issue which far predate and are superior in some respects to those of Complainant, it is clear that Respondent is legally free to offer the domain for sale at any price it wishes. Complainant’s argument in this regard is completely frivolous and clearly offered in bad faith.

There is of course a significant difference between LML Investments and Michelin North America (the “olive oil case”) in that Michelin has a legitimate claim in that its trademark is well known throughout the world and incorporated (albeit, ambiguously) in the domain name, but both have in common a failure to appreciate the evidentiary demands for proving abusive registration. It may very well be that under the present state of facts in Michelin North America ––inactive website and no evidence of bad faith under any of the paragraph 4(b) subsections––Michelin would never be able to prove abusive registration in a UDRP proceeding until the website became active. Although the Panel did not expressly state as much, Michelin North America will have another opportunity to prove its case if the domain name were to resolve to an active website with content taking advantage of its trademark’s reputation and goodwill.

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