Unlike court actions default in responding to complaints is not deemed an admission of liability. Complainant carries the burden to the end. That’s why it’s particularly interesting to read from time to time of disputes in which complainants are utterly inept on the evidentiary demands for proving their cases. Panels have shown little tolerance for those unable to marshal their proofs. The ineptness comes, I think, from over-confidence that respondents lack any defenses, which may be true but defenses are essentially offered under 4(a)(ii) of the Policy and don’t have to be established to defeat a complaint; that is, respondents don’t have to do anything to hold onto the disputed domain names if complainant fails to prove bad faith registration and use under 4(a)(iii).
This curious situation arises from time to time and illustrates an unusual degree of ineptness of complainants or their counsel in understanding UDRP jurisprudence and its evidentiary demands. In Macy’s West Stores, Inc. v. Tarek Jebara, FA150600 1625979 (Forum August 6, 2015) (respondent did not appear) Complainant was represented by an attorney who had no clue to what had to be proved. One supposes he thought the Panel would be duly impressed that “Complainant is one of the largest operators of retail department stores in the world. Complainant operates 788 retail department stores under the name Macy’s’ throughout the United States” as though magnitude and wealth of commercial presence are sufficient in themselves to prove the various elements of paragraphs 4(a)(ii) and 4(a)(iii), which of course they are not.
And, here’s where it get really interesting: Complainant’s contentions weren’t even sufficient to impress the Panel Respondent lacked rights or legitimate interests in the domain name. Usually, there’s at least enough to clear the 4(a)(ii) bar. The Panel’s comment on evidentiary requirements should be underscored by parties and counsel unfamiliar with the UDRP’s jurisprudence; it states exactly what’s missing and what should have been offered.
While “Complainant contends . . . Respondent is not making a bona fide offering of any goods or services or a legitimate noncommercial or fair use through the <macysencore.com> domain name [it] has not submitted any evidence of Respondent’s use of the disputed domain name.” (Emphasis added). The consequence of this insufficiency of evidence is that “Complainant has failed to show that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Had the evidence been offered bad faith registration and use would have been a dunk.
Obviously 4(c)(ii) has no application at all because Respondent’s name, Tarek Jebara is a giveaway that he isn’t commonly known by the name “Macy’s” but there has to be some evidence the use of the domain name isn’t legitimate, which can be done by offering screen shots of the web pages.
Even worse for counsel is that the mistake is not rectifiable by refiling. Complainants get one chance to get it right. “Once a party has been given a defended hearing . . . and a decision rendered, then a case cannot be re-litigated.” Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO November 10, 2000). The remedy thereafter lies in federal court under the Anticybersquatting Consumer Protection Act. It sometimes happens Panels order further evidence under Paragraph 12 of the Policy. It didn’t happen in Macy’s because there was a total absence of evidence and it’s not the Panel’s job to make the Complainant’s case.
In picking one particular example, I don’t want to leave the impression failure to prove a case is rare. For attorneys representing trademark owners the Macy’s kind of case should be noted with care. The Macy’s trademark has so penetrated the market that no respondent could plausibly argue ignorance, particularly in this case where Respondent’s residence is New York. Even if Respondent’s domicile was Jakarta ignorance of the name would be dismissed as absurd.
If a trademark owner is going to claim cybersquatting the least it can do is make its case.
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.