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Ignoring or Failing to Understand the UDRP’s Evidentiary Demands

One appellate panel humorously said of the UDRP proceeding that it was “adjudication lite” lite”because of “its streamlined nature and its loose rules regarding applicable law.” It is certainly lighter than litigation in federal court and rules looser, but it would be a mistake for either party to ignore the UDRP’s evidentiary demands. In many cases parties undertake the proceedings without a true appreciation for the legal requirements with the dismaying discovery that it is governed by a body of substantive law and rules of procedure of which before hand they paid little or no attention and after hand wished they had.

This point about ignoring evidentiary demands is illustrated in two recent cases, both it happens from the National Arbitration Forum, American Express Marketing & Development Corp. v. Admin Support /, FA1106001392387 (Nat. Arb. Forum July14, 2011) and Act II Jewelry, LLC d/b/a lia sophia v. Mike Man, FA1104001385563 (Nat. Arb. Forum June 6, 2011). In both cases, Complainants were represented presumably by lawyers. In neither case did the Respondents appear which makes denial of relief all the more painful. In both cases, the Complainants failed to prove that the Respondents lacked rights or legitimate interests in the domain name.

In American Express, the Panel declined to analyze whether the Complainant satisfied the requirements of paragraph 4(a)(ii) of the Policy. The analysis can be bypassed because proof that the respondent lacks rights or legitimate interests is not determinative of bad faith. Default in responding to the complaint does not lead to an automatic ruling for Complainant. The issue is determined by proof of the third element, abusive registration. The trademark in American Express is of recent vintage. ZYNC CARD registered on the principal register in September 2010. The domain name was registered in February 2011. The Respondent resides in Nevada. While “zinc” may be a common word, the playful misspelling combined with “card” creates an uncommon phrase. If future complainants and counsel are attending, the lesson could not be clearer. In denying relief, the Panel noted

Complainant has not only failed to allege a use that would constitute bad faith but has failed to allege any use whatsoever.

In other words, the complainant must offer proof regarding the respondents manner of use even if the domain name is inactive. It should establish at minimum the reputation of its trademark in the market place and the respective locations of the parties. Mere assertions of bad faith are insufficient for a complainant to satisfy this burden. Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum March 9, 2005). The complainant also has to establish evidence of knowledge of complainant’s trademark. The Complainant in American Express lost because its representative failed to marshall the required evidence that the Respondent registered the disputed domain name with knowledge that it was infringing Complainant’s trademark rights.

The Complainant in Act II Jewelry was found to have failed its burden in a different way. If the complainant fails to establish its prima facie case, it loses whether or not the respondent appears and defends. “The Panel finds that Complainant has failed to submit enough evidence in its Complaint to establish the required prima facie case.” Why? Because “Complainant has submitted its Complaint with no Annexes to show Respondent’s alleged use, and has simply restated the Policy paragraphs while failing to make substantive arguments for its position.” Failure to prove lack of rights or legitimate interests is conclusive against the complainant because failure to prove one of the elements makes further inquiry into the remaining element unnecessary. Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA 1106470 (Nat. Arb. Forum January 8, 2008).

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