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Proving Facts and Citing Authority in UDRP Disputes

Complainant’s submission on a UDRP claim must be sufficient to support its demand for forfeiture or it misplays its opportunity. It cannot rest on unsupported allegations to establish bad faith even where it succeeds on its prima facie case. A current illustration is Dice Partners, Inc. v. Joshua Cartu, D2012-0992 (WIPO June 25, 2012), discussed below. There is a small but steady stream of complainants who fail to assemble a full record. Timing of the domain name registration, respondents location, complainant’s reputation all play a significant role in establishing bad faith. Dice involves unregistered domain names in a business dispute.

Failure to pay attention to evidentiary demands undercuts a party’s position. The issue can be put in perspective by looking at an earlier case involving a well know trademark., STARWOOD. Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd., FA0501000406512 (Nat. Arb. Forum March 9, 2005) (the disputed domain name adds an “s” to form). The Panel denied the complaint because “[it] has not proven that the STARWOOD mark was so famous in Korea at the time of Respondent’s registration of the Domain Name in January 2000 that Respondent must have known of the mark and must have intended to register the Domain Name with a bad faith intent to profit from Complainant’s trademark.” The Panel also held (a point complainants should mark because this is easy to stumble on) that:

Because proving bad faith is so important to a finding of abusive cybersquatting under the Policy, it is incumbent upon complainants to adduce factual evidence affirmatively demonstrating a respondent’s bad faith. Proving bad faith is thus very different from proving that a respondent lacks a legitimate interest.

The evidentiary problem in Dice Partners involved the front end requirement, proving a trademark right. Complainant alleged that “[t]he disputed domain name <romecasino.com> was acquired by the Complainant through its then owner … before the Respondent had any involvement with the Complainant. The disputed [other] domain name <diceandcasino.com> was acquired by [another party] on behalf of the Complainant after the Respondent had commenced his employment with Rome Casino.” Even assuming a Panel were to give complainant the benefit of the doubt on the domain names it is unlikely to parse rights where the parties are involved in a business dispute that is not limited to domain names. The Respondent “seems to have been running the gaming businesses rightly or wrongly.” The Panel starts his analysis with the quizzical “if … then”:

If the Complainant has common law trademark rights in the expressions ‘Rome Casino’ and ‘Diceland Casino’ then the disputed domain names are identical with the common law mark.

But,

Even giving the Complainant the benefit of the doubt and assuming that it has rights in the alleged unregistered trademarks, the Complaint cannot possibly succeed because the Panel is quite unable to make findings on either legitimate rights and interests or bad faith.

There are two evidentiary disabilities for the complainant in Dice Partners: proving common law trademark rights (a standing issue) and overcoming the nature of the dispute, which is centered on acts outside the scope of the Policy. The “Panel is somewhat skeptical.” There are factual circumstances in which a complainant employer prevails, but not where the respondent appears and challenges the facts. Complainant in Dice Partners cites Top Driver, Inc. v. Benefits Benefits, D2002-0972 (WIPO January 7, 2003), but as the Panel points out the case was not defended, therefore inapposite to cite as authority where the facts are disputed. “[T]he Respondent agrees with little in the Complaint.” Dice Partners is an extreme example, but the principle is well established and is worth repeating. The reason why “Panel is quite unable to make findings” is that the “documents disclose sharp conflicts of fact between the parties, including allegations of fraud against the Respondent and allegations of breach of employment contract against the Complainant.”

Where domain names are simply pawns in a business dispute, the matter belongs in a court of law. “Only a court would be able to decide where the truth lies in this case after a judge has seen and heard the witnesses. A proceeding under the Policy is quite an unsuitable vehicle for deciding disputed facts, such as are starkly at issue in this case.

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