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Giving Parties Benefit of the Doubt: Sufficiency of Evidence

Giving a party the benefit of the doubt is really shorthand for insufficiency of the other’s evidence. In the first instance, complainant has the burden for establishing its case for all three elements, but as it proceeds from element to element its burden grows heavier. Proof that the domain name is identical or confusingly similar to a trademark in which it has a right is a low bar. Uncertainty whether a domain name is confusingly similar or similar but not confusing generally favors the complainant, particularly if the record favors the respondent. Element two, that respondent lacks rights or legitimate interests is heavier but complainant only has to establish a prima facie case, which is essentially a showing that there is no evidence to the contrary. The burden increases if respondent appears and offers evidence that complainant must then refute. Supplementing the record is permitted conditionally. The condition being that it is not cumulative. The heaviest burden is imposed on the third element, that the domain name was registered and is being used in bad faith.

When Panels struggle with this question it is more likely than not that doubt will be resolved in respondent’s favor. In The California Milk Processor Board of San Clemente v. Ryan Leonard, D2011-1665 (WIPO December 5, 2011) contesting the Panel’s final comment is telling:

the Panel wishes to note that while it is to some extent, giving the Respondent the benefit of the doubt with respect to its claimed intended use of the disputed domain name, if in the future such use would not materialize, or the use would change in such a way to suggest a clear abusive intent, this may well constitute a relevant consideration in any future dispute brought over the disputed domain name.

This coda is a warning to the Respondent. If the disputed domain name is used as the Respondent alleges it succeeds because it confirms good faith registration and no bad faith use. But, the domain name would have no value for any use other than the business it describes, namely the selling of “Get Milk Ads.” In this particular case, the Complainant itself identifies such selling as a legitimate business model. “The Complainant further contends that the fame of the GOT MILK? trademark is such that the Complainant’s advertisements are sold as memorabilia on eBay.”

This is exactly what the Respondent has in mind. He (in fact a “he” and a lawyer) “avers that he registered the disputed domain name with the intent to develop a website for the purpose of selling GOT MILK? advertisements, but has yet to make such use of the disputed domain name because of his busy law practice.” He is not sufficiently persuasive in affirmatively demonstrating a right or legitimate interest and hence the Panel’s struggle. “While the Panel does not consider the examples provided in paragraph 4(c) of the Policy necessarily to be exhaustive of the ways in which a respondent may demonstrate rights or legitimate interests, reliance solely on intent to use the disputed domain name in connection with a bona fide offering of goods and services is not sufficient to confer rights or legitimate interests under the Policy.” The reason for this is that to pass muster for a paragraph 4(c)(i) defense, respondent must “demonstrable preparations.” Complainant therefore succeeds on the second element because the Respondent fails to rebut the prima facie case against it.

The existence of a legitimate business in Get Milk ads makes Complainant’s burden heavier to prove registration in bad faith. This is where the nominative fair use is applied:

the issue in this administrative proceeding is not whether the Respondent (or others) has a right per se to sell (or resell) the Complainant’s GOT MILK advertisements. Rather, the issue is whether the Respondent consistent with the Policy may register and use a domain name incorporating the Complainant’s trademark for that purpose. In that regard, the consensus view of UDRP panelists is that a reseller or distributor making a bona fide offering of trademarked goods or services using a domain name which contains the trademark has a legitimate interest in the disputed domain name.

Absent proof that Respondent intended to take advantage of the Complainant’s trademark, bad faith is a maybe and maybe does not suffice to establish bad faith. With a bow to Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), in this particular case “it is … possible to conceive of [a] plausible actual or contemplated active use of the domain name by the Respondent that would … be illegitimate.” But woe betide if Respondent does not follow through with its plan and uses the domain name in bad faith. It would be a “relevant consideration in any future dispute”, meaning that it would support a return trip to a later UDRP proceeding.

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