Panels early recognized that complainant could likely not marshal conclusive proof that respondent lacked rights or legitimate interests in the domain name because the evidence was under the respondent’s custody and control. The solution agreed upon within a few months of the inception of the UDRP proceedings was to lower the proof bar and shift to the respondent a burden of going forward. This allowed the complainant to succeed in proving a prima facie case, but not in offering one. Once a prima facie case is offered it is subject to rebuttal, which requires respondent to establish its right or legitimate interest if it can by proving a paragraph 4(c) defense. The low bar for the complainant does not mean “no” bar. It cannot simply allege that the respondent lacks rights or legitimate interests and expect to satisfy its burden of proof. Respondent default does not lead to an automatic ruling in favor of the complainant. In this regard, the Policy is unlike an action in civil court where default is an admission of liability.
What a complainant must do is illustrated in many case by what the complainant has failed to do. A good example is Regents of the University of Michigan v. Elite Options Inc., FA1107001400516 (Nat. Arb. Forum September 1, 2011) involving two domain names, <surveyresearchcenter.com> and <surveyclaim.com>. The Panel concluded that the Complainant had a common law trademark in SURVEY RESEARCH CENTER, but none in SURVEY CLAIM. The case proceeded to the second requirement only for the trademark in which the Complainant had a right. Although the Complainant provided extensive evidence of the website resolving from the domain name the Panel held that “this use cannot be imputed to Respondent’s domain name.” To succeed the evidence must be what the Respondent is doing with the domain name it claims is infringing its trademark.
It should be de rigueur – like reading off a check list – to offer in evidence the most obvious proof of use. Internalize the requirement. Show the Panel what the respondent is doing and how that use relates to the Policy. “In this case, [the Regents of the University of Michigan] has not provided any screen shots of the website resolving from the domain name.” Offering screen shots is persuasive in showing where the disputed domain name leads because it corroborates a use or non-use of the domain name. See, Skyy Spirits LLC v. Stanislaw Krzenszczynski, FA0808001220829 (Nat. Arb. Forum November 26, 2008). Regents of the University of Michigan “also failed to make arguments in its Complaint as to Respondent’s use of the disputed domain name and how that use relates to the Policy.”
Failure to follow the formula for making the prima facie case is fatal. In addition to the miscues in Regents of the University of Michigan other examples include failure to “bring evidence of Respondents use of the disputed domain name in a way that infringes upon Complainant’s rights,” Nike, Inc. v. nikerotterdam, FA0804001180664 (Nat. Arb. Forum August 19, 2008) (<nikerotterdam>). When the complainant fails to marshal evidence it fails, even for famous brands. At the very least – rising in difficulty from common words and generic terms even if registered as trademarks – the complainant must be preemptive in presenting its prima facie case; that is, persuade the Panel that respondent cannot satisfy any defense under any subparagraph of paragraph 4(c) of the Policy. This will undoubtedly include deconstructing the respondent’s website and tracing its history from one of the services that provide this kind of information, the Internet Archive’s Wayback Machine or DomainTools.