The standard of proof for abusive registration is preponderance of the evidence. In lay terms the evidence must be sufficient to answer the question, Is it more likely than not respondent registered the domain name with knowledge of the complainant’s trademark; that respondent had the complainant’s trademark “in mind”? If the trademark did not exist when the domain was registered it would be impossible for respondent to have had the trademark in mind. To overcome this disabling fact complainants frequently contend that its first use in commerce preceded the domain registration even though the trademark registration was later and that it has common law rights to the domain name.
Here the question is, Who to believe? What is the evidence that could possibly tip the scale in complainant’s favor. It has to be asked this way because the complainant has the burden of proof on all three limbs of the Policy. It is perfectly reasonable to ask, Why give complainant the benefit of the doubt? Here we enter the area of metaphysics to tease out the inferences from the record. Inferences can only be drawn from the evidence, although it can be circumstantial as well as direct.
An example of this is Galvanize LLC, dba Galvanize v. Brett Blair / ChristianGlobe Network, FA1405001557092 (Nat. Arb. Forum June 26, 2014). Complainant filed a 1(a) application for GALVANIZE on May 4, 2012 with first use in commerce “at least as early as November 30, 2011.” Respondent acquired <galvanize.com> on September 11, 2011. As a rule under the UDRP complainant’s right is measured from the filing date not the date of first use in commerce so that the alleged earlier date for common law trademark must be proved by a preponderance of the evidence. Under UDRP law this requires proof of reputation. What was Galvanize LLC’s reputation when Respondent became the new registrant of the subject domain name?
One of the pieces of evidence to look at is where the parties are located. Galvanize LLC is located in Colorado and Respondent is located in Michigan. Not exactly contiguous! What was Galvanize LLC’s evidence of reputation before the date it represented as “first use in commerce.” To say “at least as early as” is a fudge. Does the registrant not know when it was first recognized by the consuming public as a source of whatever goods or services it offers? Apparently not because it is silent on the matter.
This is what the Galvanize LLC alleges:
Complainant operates hi-tech start-up accelerate communities in Denver and Boulder, Colorado and San Francisco, California. Complainant provides business consulting, strategic support and physical facilities to select technology companies and digital startups. Complainant provides physical office space in four separate office locations for as many as 150 different companies.
Conspicuously, Michigan is not mentioned so it can (surely) be inferred that none of the “select technology companies” or the “as many as150 different companies” mentioned are located in Michigan. But, if Galvanize had no reputation in Michigan where did it? Why would Respondent have had any knowledge of Galvanize LLC?
In order to prove common law rights Panelists insist that complainants offer a palette of proof. In assessing whether a complainant’s mark has acquired distinctiveness, Panels early turned to U.S. law as a touchstone, although they approach the issue of proof of unregistered trademark rights “in a slightly more relaxed manner than does the USPTO when it requires proof of secondary meaning.” NJRentAScooter v. AM Business Solutions LLC, FA0909001284557 (Nat. Arb. Forum November 4, 2009). “Slightly more relaxed,” however, cannot be satisfied by merely asserting consumer recognition. There appears to be no evidence that Galvanize LLC has any kind of reputation that would have migrated to Michigan.
It has to be admitted that the word “galvanize” is a dictionary word even if Galvanize LLC is using the term suggestively (as metaphor, “galvanizing” that is, making things happen). One would think that when a new company applies to register a trademark that it has already secured the corresponding domain name. In this case it is clear that Galvanize LLC did not obtain the domain name before it decided to register a trademark. To my mind Galvanize LLC is in the class of complainants who realize after the fact that another party has the corresponding domain name and seeks through the UDRP to challenge the domain registrant. This is an example of using the UDRP for a complaint that if it has any merit at all belongs in a court of law under the Anticybersquatting Consumer Protection Act (ACPA).
Galvanize LLC was given the benefit of the doubt. That is where the question of Why? comes in. What facts are there from which the proper inferences can be drawn that support forfeiture? I have no quarrel with a finding that Respondent lacks rights or legitimate interests in the domain name but there is no proof of bad faith registration or of bad faith use (since the domain name does not resolve to an active website). Is this is a case of complainant overreaching enabled by the Panel?
Why did the Panel find for the Complainant? Here’s the rationale:
The Panel … agrees [with Complainant], that prior to a limited liability company’s formation, the organizer of such business entity, must take a number of steps to form the limited liability company in order to bring it into existence. The Complainant’s formation date is therefore not necessarily related to Complainant’s first use of the mark “galvanize”.
The Panel also notes that Respondent has not put the domain name to use in the 2 ½ years it has been in his possession. Finally the Panels notes, that the Respondent was not able to submit substantial evidence about the purchase date, the purchase price or the former owner of the disputed Domain Name.
In the Panel’s opinion the most realistic interpretation of the actions of the Respondent is that he registered the Domain Name in the hope that he might be able to sell it at a significant profit to the Complainant or alternatively to someone who could use the Domain Name to his commercial advantage by engaging in the activity contemplated by paragraph 4(b)(iv) of the Policy.
For this proposition the Panel cites Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.), D2003-0320 (WIPO July 4, 2003) in which, although the Panel acknowledged that “Respondent’s registration of the Domain Name was prior to any of the trademark or service mark registration applications of Complainant,” it nevertheless found bad faith because “Respondent registered the Domain Name fully conscious of what ‘business’ he could make out of mistakenly being affiliated with the Complainant.” However, a review of this case makes it clear that there was sufficient circumstantial evidence to support the conclusion of abusive registration.
The shoddiness of the analysis in Galvanize LLP is that it turns the UDRP into the ACPA. Registrants are not prohibited and there is no law that allows forfeiture solely because they have acquired a dictionary word domain name “in the hope that he might sell it at a significant profit” to someone in the future who wants it. That is what is known as enterprise. That the Respondent in this case has not used the domain name is irrelevant. There is no law that compels a registrant to use a domain name or suffer forfeiture. This is not a case, for example, in which there can be no use of the dictionary word that would not infringe Complainant’s exclusivity right. “Galvanize” can have a mutliple of uses without invading Complainant’s space.
What one comes away with from the Galvanize LLP decision is that the Panel gave insufficient thought to the parties’ respective rights. In these kinds of cases where there is no direct evidence and the circumstantial evidence is also missing the benefit of the doubt must, as it does in litigated disputes, be found in respondent’s favor.
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.