A UDRP record is similar in some respects to a motion for summary judgment in a civil action in that each party puts forward its best case in support and opposition to the complaint. The difference is that in a civil court action a case can proceed to discovery and trial but in a UDRP proceeding the record is all there is. Credibility plays a role just as silences do. Persuasion is partly in the manner in which evidence is presented, but more importantly it is the submission or withholding of evidence that supports a party’s argument. So, offering and withholding evidence cannot fail to impress the Panel. In Fiji Rugby Union v. Webmasters Limited, D2003-0643 (WIPO December 24, 2003), for example, the majority stated that although the case was “finely balanced” it was able to “draw inferences from the manner in which the Respondent has argued its case, retreated from formal statements of fact and generally been less than forthcoming.”
These evidentiary issues bubble up in Case Management Professional Staffing Solutions, Inc. v. Genius Genius of NY Inc., FA1111001414200 (Nat. Arb. Forum December 12, 2011). The Panel found that Complainant had established a prima facie case, thus shifting the burden to Respondent to rebut evidence that it lacked rights or legitimate interests in the disputed domain names which consist of a series of letters, and. The “ceu” component is “continuing education units.” Complainant is a certified CEU provider. “Complainant [alleged that it] has rights in the mark AAACEUS.COM through a trademark registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,582,290 filed November 29, 2007; registered March 3, 2009). Complainant also submits that it has common law rights in the mark AAACEUS.COM and that they date back to October 24, 2005.”
The disputed domain names in Case Management differ from the trademark by omitting the final “s” of the second level domain. Respondent countered that the “aaa” series stands for “Above All Academics Inc.” He did not register the domain names in that corporate name because “Complainant delayed Respondent from launching its business” thereby appearing to raise a business dispute.
The Panel observes that Respondent “seeks to [rebut Complainant’s prima facie proof] by advancing an argument, to which the Panel has given careful attention , drawing on the relationship between the parties and Respondent’s version of the history of the registration of the domain names, their use since then and other aspects of Respondent’s business.” In this respect,
Respondent’s case raises the difficult question of whether and how a UDRP panel should approach such disputes where there is a conflict of testimony.
“Undoubtedly,” (the Panel continues)
there are cases where the dispute is complex and probably not appropriate to be resolved by the limited processes available in UDRP proceedings.
This would be the summary judgment result where there is a genuine issue of material, therefore triable fact. However, the Panel continues
On the other hand, a panel has a clear responsibility to make a decision where there is adequate material before it and where it is possible to decide if one party or the other has the better case. In the present case, the Panel has decided that although the parties are in dispute, the dispute is essentially about the domain names and there is sufficient evidence for the Panel to reach a conclusion.
As part of its case, “Respondent denies that it copied Complainant’s trademark and then tried to cover its tracks by making a slight spelling alteration; in other words, Respondent denies that this is a case of typosquatting.” But, “was it typosquatting?” While these issues are clearly “difficult to decide” the Panel concluded that “on the balance of probabilities” is was an example of typosquatting. The reasoning (which is the part of the decision I want particularly to stress) is
Whether Complainant was pre-eminent in its field or not, it is clear that it was in business under its trademark, domain name and website and that it had maintained that position for a period of at least some 18 months, from October 24, 2005 until April 4, 2007, when Respondent registered the first of the two domain names…. It must also be remembered that Complainant had the domain name <aaaceus.com> from November 29, 2004 and that it was registered in the name of AAACEUS.COM. Thus, although it is true that Complainant subsequently applied for a trademark in the same name and claimed that its first use in commerce was on October 24, 2005, its domain name was registered almost a year earlier.
a search using the Wayback Machine atshows that the domain name was actively used and that the first website under that name was on the internet by January 7, 2005, showing a website substantially the same as it remained and as it is today. Not only does this show that Complainant was actively in business during the whole of the time from January 7, 2005 and on the public record as doing so, but that this was the case immediately prior to the two dates when Respondent registered the two disputed domain names.
The rebuttal evidence was not persuasive. The fact that the domain names were actually registered in the name of the present Respondent and not the corporation “make it more likely than not that in registering the two disputed domain names, Respondent was influenced by Complainant’ trademark, that it was in effect copying Complainant’s name and that there was no other legitimate reason for registering the two disputed domain names.”