Assigning burdens in a UDRP proceeding is well established. For all paragraph 4(c) defenses respondent’s proof must establish “past” and “present” as opposed to “future” use of the disputed domain name. Thus, for paragraph 4(c)(i) respondent must demonstrate its “[present and past] use of” or “demonstrable [present] preparations to use” the domain name constitutes a right or legitimate interest; for paragraph 4(c)(ii) the respondent must demonstrate that it is “commonly known” by the domain name from a point in time that precedes its registration; and in paragraph 4(c)(iii) the proof is the manner in which the domain name is being used “now.” Intended future use unaccompanied by evidence of present use is not a good defense under either 4(c)(i) or 4(c)(ii) of the Policy.
For the second element complainant has an initial burden to establish a prima facie case that respondent lacks any right or legitimate interest in the disputed name and (if successful) the burden shifts to respondent that it does. A shifting of burden is a recognized procedure in the prosecution and defense of civil actions. The Respondent in Tommy Bahama Group, Inc. v. Domains by Proxy, Inc. / Aware Marketing, D2011-2127 (WIPO January 31, 2012) (represented by counsel incidentally) “aggressively denies it has the burden to prove it has established rights or legitimate interests in the domain name.” Such argument has no merit. The rule is that respondent satisfies its “going forward” burden (if at all) by establishing one of the affirmative defenses set forth in paragraph 4(c) (i-iii) of the Policy.
Where the defense is noncommercial or fair use of the disputed domain name, 4(c)(iii) (as alleged in Tommy Bahama) the respondent must demonstrate present not future use of the domain name. The Panel in Tommy Bahama notes differences in approach for criticism websites. “It is clear” (he explains) “that choosing to decide this case in accordance with principles of the United States law will tend to favor Respondent, assuming Respondent is making a legitimate noncommercial or fair use of the domain name. On this point, and because both the Complainant and the Respondent appear to reside in the United States, the Panel decides to indeed decide this case using United States trademark law.”
Commercial criticism as a general category of free speech rests on the proposition that speaking in opposition to a trademark owner is a right worthy of protection. It may be parochial to believe that other countries are less protective, but to get a bearing on this is an issue for a later note. In principle, use of a domain name “to criticize a company is prima facie fair use.” Shell International Petroleum Company Limited v. Alfred Donovan, D2005-0538 (WIPO August 8, 2005) (. U.K Complainant; U.S. Respondent). If the content qualifies, the right follows. Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) () and Britannia Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001) () are examples.
The Tommy Bahama Respondent, however, asserted legitimacy without demonstrating which is fatal to proving an interest or legitimate interest and supports bad faith. The going forward burden is not satisfied by the mere addition of “sucks.” “While the attorney for Respondent does allege that Respondent has plans to create a criticism site at “www.tommybahamasucks.com” this assertion is not evidence because attorney argument is not evidence.” If a party has a legitimate intent to create a criticism site, “then the Panel believes Respondent most likely had documentary evidence detailing the preparation of the site and could have submitted these documents as evidence in support of its allegation.” The failure to come forward with evidence “on this point tends to undermine Respondent’s assertion.” Interesting to note here that this analysis parallels the requirement under paragraph 4(c)(i) of the Policy, namely that if the website is not presently active, but contemplated use must be demonstrated.