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Standards of Proof, URS and UDRP

In the hierarchy of standards “beyond a reasonable doubt” (criminal intent) is higher than “clear and convincing” (URS) which is higher than “preponderance of the evidence” (UDRP). The UDRP sets forth in general terms conduct that violates a trademark owner’s rights and respondent’s defenses of fair use and registration but to understand the fine points of good and bad faith parties have to research the thousands of meticulous decisions Panels have filed since the inception of the Policy in 2000. What proof standard applies, for example, is not written into the UDRP but Panels quickly determined (over objection of some panelists in favor of a higher standard) that it should be by a preponderance of the evidence except for the paragraph 4(a)(ii) limb which only requires a prima facie showing that respondent lacks rights or legitimate interests in the domain name.

The URS is different in that it expressly provides for the higher standard. “The URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse.” URS, para. 8.5. A complainant cannot prevail unless it establishes its case by clear and convincing proof of abusive registration. If bad faith is not evident on the surface complainant loses. The more complainant has to rest on circumstantial evidence and weak inference the less persuasive its case. This was seen in Virgin Enterprises Limited v. lawrence fain, FA1402001545807(Nat. Arb. Forum March 20, 2014) (<branson.guru>) discussed in an earlier blog. It is also illustrated in International Business Machines Corporation v. North Sound Names et al., FA1406001563944 (Nat. Arb. Forum July 7, 2014) (<aix.link> and <db2.link>) which gives us a better opportunity to take in the requirements.

The URS Procedure expressly states that:

5.9.1: Trading in domain names for profit, and holding a large portfolio of domain names, are of themselves not indicia of bad faith ….
5.9.2: Sale of traffic (i.e. connecting domain names to parking pages and earning click-per-view revenue) does not in and of itself constitute bad faith under the URS.

As with the word “Branson” the characters “aix” and “db2” are not exclusively associated with IBM. “Respondent points to other uses in commerce of the AIX mark, including AIX Records (and <aixrecords.com>), AIX Insurance Group, vintner AIX Rose and restaurant AIX Brasserie. And Respondent also points to other uses of the DB2 mark, including the DB2 digital broadcast system of TC Electronic and the DB2 design group found at <db2.nl>.”

The Panel’s conclusion is helpful in understanding the meaning of “not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse.” Thus,

we must also consider that, under the URS Procedure, Complainant’s claim of rights in the AIX and DB2 marks must be limited to the realms carved out for them in Complainant’s mark registrations….

In other words if the domains can be legitimately used for websites offering different goods and services than those offered by IBM there is no “clear and convincing proof” of bad faith. In any event a proceeding is premature until there is direct evidence from content that there is cause for suspension, which is the sole remedy for abusive registration under the URS. Here, “[t]here is no evidence in the record to suggest that Respondent is attempting to create or exploit a connection between its use of the domain names and Complainant’s computer software and related database management business. Indeed the landing pages for the two domain names are devoid of any reference even indirectly pertinent to that business.”

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.

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