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Respondent’s Burden of Persuasion is Disjunctive: Rights or Legitimate Interests

Respondent’s burden of persuasion under paragraph 4(a)(ii) of the Policy is disjunctive. It satisfies the requirement if it has either a right or a legitimate interest in the disputed domain name, in which event the complaint must be dismissed. The test is framed in the present tense: “[Respondent] lacks any right or legitimate interest” in the disputed domain name. Early Panels quickly recognized that complainants were at a disadvantage in marshaling evidence about respondents’ circumstances except inferentially what could be gleaned from the website to which domain name resolves. For this reason complainant’s proof bar is low; it is satisfied by presenting a prima facie case. The test is not whether complainant has “more of an interest than Respondent in the domain name” but whether “Respondent has no [right or] legitimate interest [in it at all].” The “correct approach” is for complainant to “put[] forward what he can in support” of his contention. Choice Courier systems, Inc. v. William H. Kirkendale, 2002-0483 (WIPO July 23, 2002). Then, if it appears that respondent “lacks any right or legitimate interest” it must come forward to explain why it does. Explanation and proof are “peculiarly within the knowledge of the respondent.” Julian Barnes v. Old Barn Studios Limited, D 2001-0121 (WIPO Mach 26, 2001).

Respondent prevails under the Policy if it either comes forward with a persuasive explanation under 4(a)(ii) or complainant stumbles its burden under 4(a)(iii). Generally, Panels are not required to make a finding under paragraph 4(a)(ii) and many decline on the theory that it need not do so because, in looking ahead to the 4(a)(iii) requirement complainant is seen to have failed to demonstrate conjunctive bad faith. (Failure to satisfy any one of the three requirements supports denying the complaint. See, for example, Guarani S.A. v. Marchex Sales, Inc, Brendhan Hight, D2012-2139 (WIPO December 19, 2012): “As the Policy’s requirements are conjunctive … the Panel finds no reason to comment or consider paragraph 4(a)(ii) as the Complaint has been denied on other grounds.”)

Similarly, the majority in Interior Design Media Group, LLC v. P. A. Gordon, FA121000 1467034 (Nat. Arb. Forum December 19, 2012) declined to rule on the second requirement but in this case the decision triggered an unusual response by the third member who filed a separate and concurring opinion to discuss the reasons why (in his view) the analysis should be made.The reasoning is worth paying attention to. It should be important to know whether the registration was in good faith as that settles the issue in respondent’s favor, while proof failure under paragraph 4(a)(iii) settles the issue against complainant. The concurring panel noted that the “issue of Rights [or] Legitimate interests” (I’ve changed the “and” in the Opinion to “or” because the phrase as written in paragraph 4(a)(ii) is in the disjunctive) “is an important one and probably should be dealt with under its own heading.”

A domain name composed of a generic term may be identical or confusingly similar to a complainant’s trademark – in Interior Design Media the trademark and domain name are identical – but if the proof demonstrates registration and use consistent with a term’s semantic meaning and no targeting of the trademark, then no bad faith can be imputed. In this case there was no proof of targeting. The Panel noted

[I]t would be difficult to find an expression more generic or descriptive than “interior design” as those words describe the process or concept of designing the interiors of buildings and it an expression widely and commonly used. Nor do the facts raise a suspicion that Respondent had Complainant’s trademark in mind when it registered the domain name. Indeed, the evidence suggests the contrary.

Respondent’s interest is legitimate because its use of the generic phrase “interior design” is consistent with its semantic meaning. “This panelist has looked at what can be produced by the Wayback Machine and has found that the website has in the past promoted services coming within the generic expression “interior design’ such as interior design courses and the like, as it does today.” The lower a term’s classification the heavier the burden of proving respondent’s intention to take advantage of the corresponding trademark. Influencing the Panel as a whole was another factor going to the paragraph 4(a)(iii) requirement:

Although the Panel does not in this instance find that the laches or delay is a reason in itself to deny the Complaint, it nonetheless finds the delay to be a factor affecting the integrity of a claim of registration in bad faith so many years earlier….

Whether the respondent in Interior Design Media has a “right” is an entirely different matter. Interests are transient; rights permanent . If it started using the domain name in an infringing manner it would be an issue under the Anticybersquatting Consumer Protection Act. There is already precedent in federal cases, that even if registration were in good faith subsequent use in bad faith is actionable under the Trademark Act.

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