Complainant has the initial burden of proof while respondent has the burden of persuasion on the right or legitimate interest in the domain name. Let us look back to one of the key rules of a UDRP proceeding, namely shifting the burden on proof of a prima facie case. It is expected that the party controlling the facts has an affirmative burden. For example, proof of complainant’s right under paragraph 4(a)(i) of the Policy is based on facts within its knowledge and evidence under its control. Withholding but compelled to admit dispositive evidence that its trademark right came into existence years after the registration of the domain name “constitutes,” as the concurring Panel in Credit Europe Bank N.V. v. Peter Yu, D2010-0737 (WIPO July 14, 2010) notes “a flagrant abuse of the entire UDRP process.” The Complainant intended to create a false impression. Had the Respondent defaulted, the Complainant’s misleading allegations as to the commencement of its trademark right would have been sufficient to capture the domain name. This is what the Panel meant by “flagrant abuse.” But, more of this case tomorrow.

Paragraph 4(a)(ii) is (or would be if the burden were unrelieved) a harder test for the complainant and is the fulcrum for both parties. It requires the complainant to prove that the respondent lacks rights or legitimate interests in the domain name, but in contrast to paragraph 4(a)(i) the facts are not within its own but under the custody and control of the respondent. Here, Panels quickly determined that the test required something less than conclusive proof. The complainant could satisfy its burden by offering a prima facie case. Prima facie is defined as one that “will suffice until contradicted and overcome by other evidence,” Black’s Law Dictionary (Revd Fourth Ed).

Once the complainant offers a prima facie case that respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to respondent to provide credible evidence that it does. Shifting the burden entered the UDRP vocabulary tentatively in April 2000 in two cases by the same panelist, EAuto, Inc. v. Available-Domain-Names.com, d/b/a Intellectual-Assets.com, Inc., D2000-0120 (WIPO April 13, 2000) and EAuto, L.L.C. v. EAuto Parts, D2000-0096 (WIPO April 9, 2000). It took only a few more months to solidify as a rule in the decision process, D2000-0252, 0270, 0374, 0624.

The complainant satisfies its burden by offering sufficient evidence that yields an inference that the respondent lacks rights or legitimate interests. The inference is tentative and subject to rebuttal. As explained in Educational Testing Service v. Netkorea Co., D2000-0087 (WIPO April, 2000), the complainant’s burden is “relatively light” for the reason that “[b]y and large, such information is known to and within the control of the respondent.” The “light” standard is explained by the relative difficulty of marshaling evidence “uniquely within [the respondent’s] … knowledge and control,” G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO August 21, 2003). The Panel in Croatia Airlines noted that

Since it is difficult to prove a negative (i.e. that Respondent lacks any rights or legitimate interests in the mark) – especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of such rights or interests – and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant’s burden of proof on this element is light.

A consensus quickly formed that application of the prima facie rule was necessary owing to the difficulty of proving a negative. Without respondent’s participation and even with it, the complainant must make do with whatever adventitious information it can glean from the Internet (search responses for example), deconstruct from the website to which the domain name resolves (its present and historical content) and/or deduce from a respondent’s UDRP statements in the response to the complaint, cease and desist letters, and communications prior to the initiation of the proceedings.

At a minimum the complainant must affirmatively state that 1) it has no relationship with the respondent and did not authorize the respondent to use its trademark, facts within the complainant’s knowledge [paragraph 4(c)(i) of the Policy], 2) the respondent is not commonly known by the domain name, a fact evidenced by the respondent’s name disclosed in the Whois database [paragraph 4(c)(ii)] and 3) the respondent is not using the website for legitimate noncommercial or fair use purposes, a fact discernible from the contents of the website [paragraph 4(c)(iii)]. The inference in support of a finding in complainant’s favor is sustainable unless the respondent comes forward with affirmative proof that its right or legitimate interest trumps complainant’s trademark right.

Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com