Just as complainants cannot prevail on the strength of their trademarks which only proves the first requirement of the Policy that it has standing to maintain the proceedings, so respondents do not forfeit their domain names on default of responding to the complaint. Insuffiency of evidence is conclusive even for brand name owners.
This message continues to be lost even to the most prestigious law firms and the wisest counselors. If nothing but suppositional allegations are offered as proof for paragraphs 4(a)(ii) or 4(a)(iii) relief will be denied. Should that verdict be applied to iconic trademarks such as AOL, as it was in AOL, Inc. v. ChengshuangLi, FA1302001483339 (Nat. Arb. Forum March 26, 2013)? The Panel made the following pronouncement: the “Complainant’s entire argument” on the issue of rights or legitimate interests is that
Respondent has no rights or legitimate interests in the infringing domain name. Respondent is not named or commonly known as AOL, nor is he licensed or authorized to use the AOL mark in this manner.
But, this bare bones recitation is insufficient as the Panel explains: “In this case, Complainant has not made a prima facie case that Respondent lacks rights and legitimate interests.” Why? Because “Complainant has not stated how the domain name is being used.”
Now you may think that Complainant was simply unlucky in having particular panelist assigned to the case who demands support for conclusory assertions! Or, it is a warning by an experienced panelist that sufficiency requires offering evidence of factual circumstances, even where the respondent (Chinese in the AOL case) fails to appear. The onus is on the complainant to prove each requirement separately.
What this means is that as complainant ascends the procedural scale of requirements the evidentiary demands increase; that is, it’s easier to prove rights but a step more difficult to prove that a party lacks rights or legitimate interests. The proof for prevailing on the second requirement is greater than the first, but easier than the third. AOL lost (even though I think it a questionable call) because it apparently failed to offer persuasive evidence to prove its prima facie case; either that or its suppositions were unsupported with documentary evidence even though Respondent’s rights or legitimate interests were transparently thin.
Proof of a prima facie case can be reduced to a check list which takes the paragraph 4(c) defenses and turns them around: contention 1 (not authorized) and evidence of it (which could be a declaration from a person with knowledge); contention 2 (not commonly known by) and evidence of it (which could be a copy of the Whois directory); and contention 3 (the manner in which the domain name is being used) and evidence of it (which could be a snapshot of a page). AOL offered the first two apparently without any supporting declaration and neglected the third.
It is important to note whether the domain name is being used at all, or passively held (which is a form of use, that is occupying space reserved for trademark owner). To allege that a respondent has no rights or legitimate interests in a domain name is conclusory, and conclusory alone is insufficient to satisfy the requirement. The Panel cites to an earlier, more successful case initiated by the same Complainant: AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006). In this case AOL succeeded in persuading the Panel it had made its prima facie showing against an appearing Respondent:
Here Complainant has alleged that Respondent does not have rights or legitimate interest in Respondent’s Domain Name. Complainant argues that Respondent is not generally known by Respondent’s Domain Name and is not using Respondent’s Domain Names to further a legitimate business interest. To the contrary, Respondent is attempting to trade on Complainant’s good will. This satisfies Complainant’s burden.
Insufficiency of evidence can be thought of as a kind of silence. A record is a combination of statements and silences. There are different kinds of silence. Default is a silence; suppositional allegations are a silence. What a party omits in its submission can be equally as important as that which it includes. Omission where evidence is expected is a form of silence (Respondent’s submission in the second AOL case where it contended that it was offering a bona fide service which is a fallback argument by any cybersquatting but failed to prove that its use of the domain names was bona fide). Holding back facts, for example, supports an adverse inference as does any manipulation of evidence.
While default is not an admission of liability and suppositional allegations are not conclusive, these strategies have consequences. Omitting what can easily be confirmed strikes at a party’s credibility. I am speaking generally now and not about the AOL case in particular.
The fact that a complainant is well-known, famous even and iconic does not excuse insufficiency of evidence. The evidence in the latest AOL dispute is obviously available and could easily have been marshaled, but (it appears) counsel or Complainant’s representative wrongly believed that he could prevail by alleging suppositions rather than demonstrable facts. This may be a harsh result but Panels will not make the complainants’ cases for them even where it is otherwise clear about respondent’s intention in registering the domain name as is the case with <webmail-aol.us>.
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.