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Insufficiency of Evidence in Asserting Rather Than Proving Facts

In view of the fact that the UDRP is a paper only proceeding the pleadings and evidence must be developed with as much care and the record be as complete as a motion for summary judgment in a civil action. Proof of a fact is not satisfied by assertion or supposition, but requires concrete evidence. “‘Concrete evidence’ constitutes more than mere personal assertions,” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000). In Clark Associates, Inc. v. Belize Domain WHOIS Service Lt, FA1010001353058 (Nat. Arb. Forum December 6, 2010) the Panel found the Complainant deficient in making its prima facie case that the respondent lacked rights or legitimate interests in the disputed domain name, citing Yao Ming v. Evergreen Sports, Inc., FA 154140 (Nat. Arb. Forum May 29, 2003) for the proposition that parties have to allege and prove their contentions. In Yao Ming, the Complainant in failed to “allege[] any facts related to Respondent’s use of the disputed domain name” thus suggesting a pleading deficiency. If the facts are either not pleaded or if pleaded and not proved the “Panel has no knowledge of Respondent’s use of the domain name upon which to base a decision under Policy ¶ 4(a)(ii) and (iii),” Yao Ming.

The Complainant in Clark Associates, as with a number of other recent complainants whose rights post-date the registration of the domain name, is essentially using the UDRP in an attempt to capture domain names that correspond with their newly minted trademarks. See for example X6D Limited v. Telepathy, Inc.,D2010-1519 (WIPO November 16, 2010) discussed in an earlier Note (reverse domain name hijacking granted); CareFree Homes II, L.P. v. Worldwide Media, Inc. / Domain Administrator, FA1010001351494 (Nat. Arb. Forum December 7, 2010)(reverse domain name hijacking denied); and Zerorez Franchising Systems v. Whois Privacy Protection Service, Inc. c/o Whois Agent, FA 1354124 (Nat. Arb. Forum December 6, 2010) (reverse domain name hijacking not put in issue). These are cases in which no assertion of fact can be validated and proved for a UDRP remedy.

Although there may be circumstances that support a finding of bad faith, an active or passively held domain name registered before a complainant’s right has come into existence cannot have been registered with the complainant in mind. Such are the facts in Clark Associates with <webstaurant.com>. “The record shows that Respondent registered the disputed domain name August 18, 2004.” But, “Complainant has failed to establish rights in the THE WEBSTAURANT STORE mark prior to June 29, 2009.” The Complainant has standing based on its latterly obtained trademark but it has no actionable claim.

The sufficiency demanded in prosecuting or defending a claim applies in equal measure to both complainant and respondent. “Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of registered marks, so should the panel require that a respondent come forward with concrete evidence that the assertions made in the response are true,” Do the Hustle. Thus, for example, a respondent’s allegation that it is “commonly known by the domain name” is unpersuasive if the name was adopted for the registration. In Jay Leno v. Guadalupe Zambrano, D2009-0570 (WIPO June 25, 2009) the Respondent failed to understand the distribution of burdens. He argued against the grain that “it should be the Complainant’s responsibility to prove that [the respondent] has benefitted from directing the disputed domain name to his website.” Ingenious though this argument may be, it does not support any known defense.

Gerald M. Levine <udrpcommentaries.com>

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