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Burden of Establishing a Right or Legitimate Interest

See Anthology of Commentaries — 2014

The burden of proof is always with the complainant but it does not have to establish a right to the domain name–its burden is to establish that respondent registered the domain name in bad faith–but it does have to establish it owns (or has an exclusive right to use) a trademark it claims infringes its right. There has to be some evidence of the right. The Complainant in S.P.C.M. SA v. Whois Privacy Services Pty Ltd / Vertical Axis Inc., Domain Administrator, D2014-0327 (WIPO May 20, 2014) (represented by a premier French law firm no less) has absolutely no clue about what it takes to satisfy the burden to prevail in a UDRP proceeding. First, it cannot persuade the 3-member Panel it has any trademark right at all but to humor it the Panel accepts Complainant’s contentions as a Hail Mary pass: “Nowhere that the Panel has been able to find is there any reference anywhere on the website to the corporate entity SPCM S.A. [and] accordingly [is] completely in the dark as to how, if at all, the Complainant fits into the ‘SNF group’ as described in the webpages.” Nevertheless,

The Panel [assumes there is a connection between Complainant and the “SNF group’ but] in view of its other findings … the point does not matter. Had the Panel been minded to find in the Complainant’s favour on all other issues it would have needed to consider this issue further.

Fourteen years’ of UDRP decisions has made it clear complainant has the burden of proof on all limbs of the Policy. Had Respondent in S.P.C.M. not appeared with proof of its right or legitimate interest perhaps Complainant may have succeeded in capturing <>, which in view of the Panel’s comment about being “in the dark” would have been a long shot but cases can be cited in which had a silent or defaulting respondent offered plausible explanations of its choice the decision would have gone the other way.

To speak of respondent’s burden does not mean it has one. Respondent can remain silent and prevail but where complainant’s evidence is sufficient to prevail against silence, silence is no help; is in fact lethal. It is in that sense that respondent has a burden–a rebuttal burden. It has two opportunities for trumping complainant by either affirming it has a right or legitimate interest–rebutting complainant’s prima facie case (paragraph 4(a)(ii)); or, if it has neither, that it has an unassailable priority complainant cannot defeat (paragraph 4(a)(iii)).

S.P.C.M. illustrates the point: “Respondent has produced a very detailed Response and set out numerous authorities in relation to its case.” In contrast, Complainant relies on a single case involving the same Respondent–CEAT Limited, CEAT Mahal, v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd, D2011-1981 (WIPO February 20, 2012)–that Respondent claims was wrongly decided (which happens!) Respondent does not have to deny that Complainant may have a trademark right:

[Respondent] says there will typically be many organisations or products which have a name or a product or service which if portrayed as an acronym will correspond to a given three letter sequence…. The Respondent says it had never heard of the Complainant when it effected the registration. It says that would still be the case today, except for the knowledge it has gained as a result of this case.

These two sentences are the heart of Respondent’s rebuttal and defense. The first is the kernel for limb two of the Policy and the second sentence offers a plausible denial of knowledge (third limb).

Interestingly, the S.P.C.M. Panel includes the dissenting panelist in CEAT. I wrote about CEAT when it came out in 2012 and noted that “The majority rests its conclusion of abusive registration on awkward logic, namely that if there “is no dictionary meaning for the term ‘ceat’ … [t]he value of the disputed domain name to the Respondent is, therefore, its value as a trademark.” The S.P.C.M. Panel rejects CEAT, politely (there is never–or rarely ever–any overt criticism of earlier cases) although it is also clear it found the earlier decision unpersuasive:

It is neither necessary nor appropriate for the present panel to reach a conclusion as to whether the majority in the <> case were or were not correct…. In the present case this Panel does not have available all of the materials from the <> case and beyond reading the decision itself has not studied the arguments that were advanced in that case.

Since the “UDRP does not operate on a system of binding precedent” and later Panels are “not bound by … previous decision[s], even if satisfied the cases are in relevant aspects identical” earlier cases can be disregarded. Nevertheless, ordinarily and as implied in the S.P.C.M. decision, precedent plays a key role in decisions. In fact, by politely rejecting the CEAT decision the S.P.C.M. Panel indicates the earlier analysis was flawed.

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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