How does the complainant affirmatively prove that the respondent lacks rights or legitimate interests in the disputed domain name when the proof is within respondent’s control? The answer is now given in every decision that the complainant must present a prima facie case; the burden then shifts to the respondent. Proof of lack of rights or legitimate interests received a good deal of attention during the early months of the UDRP until the right approach was established. This Note revisits one of the early cases, Do The Hustle, LLC v. Tropic Web, D2000-0624, (WIPO August 21, 2000) to review the Panel’s reasoning in adopting the prima facie approach. See last week’s discussion on precedent.

The prima facie approach entered the UDRP vocabulary tentatively in April 2000 in two cases by the same panelist [D2000-0096 and 0120]. It took several more months to solidify it as a rule in the decision process. The Panel’s explanation in Do The Hustle is among the decisions that created the precedent for the approach. The Policy and Rules do not mention any particular approach to answering the questin and there is no suggestion of it in the WIPO Final Report. However, the approach was found to be the most logical construction of the Policy. Paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principle of law that it deems applicable.”

Panels were faced with a “seeming contradiction” in ruling on rights or legitimate interests. On the one hand the language of paragraph 4(a) of the Policy “seems to say that the complainant has the burden of proof as to each of the three elements,” but applying this to paragraph 4(a)(ii) “would require complainant to prove a negative, a difficult, if not impossible task.” On the other hand reading paragraph 4(c) together with 4(a)(ii) “strongly suggests that it is the Respondent who bears the burden of proof as to paragraph 4(ii).” Paragraph 4(c) of the Policy is captioned “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint.” This signifies that the respondent must do something in response to a prima facie case or be found to lack either rights or legitimate interests.

Three views emerged, although the second and third are essentially the same. The first view is that “the respondent need do nothing if the complainant does not furnish affirmative proof that the respondent has no rights or legitimate interest in respect of the domain name in issue.” The Panel in Do The Hustle cites three or four cases, but the application of this view leads to an absurd result illustrated in the Penguin case, Penguin Books Limited v. The Katz Family and Anthony Katz, D2000-0204 (WIPO May 20, 2000) (“The Respondent has produced evidence, which this Administrative Panel must accept in the absence of any rebuttal evidence from the Complaint, that Mr. Katz has for many years been known by the nickname ‘Penguin’.”)

Other Panels have taken the view that the burden on the complainant is a “relatively light” one, although except for not labeling it the prima facie approach it has the same practical effect. The question then is, What must the Respondent do to satisfy its burden of production? Here, the Panel believed that it had to clarify what is meant by “concrete evidence.” It stated that

‘Concrete evidence’ constitutes more than mere personal assertions. Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of the registered marks, so should the panel require that a respondent come forward with concrete evidence that the assertions made in the response are true.

What this means is that paragraph 4(c) defenses must be proved affirmatively. If no evidence is offered, it does not exist, and the panelist moves onto the issues of bad faith registration and use. In the case of Do The Hustle the Panel found that the Complainant offered no evidence that the Respondent registered <pollyesther.com> in bad faith, that is there was no evidence that the Respondent registered the domain name with the Complainant’s trademark in mind.