Paragraph 4(a)(ii) of the Policy requires complainants to offer evidence conclusive by itself or sufficient from which to infer that respondents lack rights or legitimate interests in the accused domain names. As I’ve pointed out in earlier essays (here and here) the standard of proof is low and relies on inference, for good reason; beyond the visual proof and what may be obtainable from on- and offline research, respondents control evidence of their choices.
This is the reason for the evidentiary convention of negative facts, which allows complainants to allege facts within their knowledge—that they did not authorize use of their trademarks—facts visually apparent from the use (or non use) of the domain name—that for example it resolves to a website populated with links to businesses competitive with complainant, Kinon Surface Design, Inc. v. dongboyin / changzhouyikeruisiz huangs, FA1602001659612 (Forum March 11, 2016); or phishing for personal information, Xilinx Inc. v. WHOIS AGENT / WHOIS PRIVACY PROTECTION SERVICE, INC., FA1602001659030 (Forum February 27, 2016); or requesting a wire transfer (a popular scam generally associated with e-mails), Insight Investment Management Limited v. Hossein Fazlollahi, DCO2016-0004 (WIPO March 3, 2016)—and lastly that none of the paragraph 4(c) defenses apply (that is, the negative facts). If the evidence is sufficient to establish a prima facie case the burden shifts to respondent to rebut complainant’s proof.
If complainant is unsuccessful in its prima facie case or respondent successful in rebutting the proffered evidence the complaint fails. In part, the determination that respondent lacks rights or legitimate interests rests on the strength or weakness of the trademark, and in other part on whether respondent has any paragraph 4(c) defenses, which if it does it must assert. Essentially, a meritorious defense establishes a lawful registration, which if successfully made concludes the assessment. The stronger the trademark the harder for respondents to sustain an argument of rights or legitimate interests, even if it has priority. (Remember, lack of rights or legitimate interests is not conclusive on the issue of abusive registration).
Strength of trademark together with use of domain name is evident in the three cases already noted. Although arbitrary terms such as KINON and XILINK are stronger than phrases composed of dictionary words, phrases can gain strength in uncommon couplings such as “insight investment”—as opposed to the common phrase “sound investment” (which is a perfectly lawful domain name that has never been challenged) or “summer tech camp” which has been unsuccessfully challenged in another recent decision. In contrast, owners of trademarks composed of common couplings cannot presume respondents registered second level domains for their trademark value when it is demonstrably untrue. Domain names that happen to incorporate terms distinctive for trademark purposes but weak for having multiple associations are harder for complainants to make their case.
Coupling of common words to produce common phrases, and the balancing of rights to them as between trademark owners and domain name registrants (even if priority favors complainant), is illustrated in X for convening and Managing Athletic Events v. Registration Private, Domains By Proxy, LLC, DomainsBy Proxy.com / Ebrahim Alsaidi, D2016-0013 (WIPO February 26, 2016) (“desertstorm” which came into prominence in the Gulf war, 1990-1991 as “Operation Desert Storm”). In this case, Complainant does not have priority but owns a Jordanian trademark for DESERT STORM: it produces an “Arab sports league and television show that airs weekly and tours multiple Arab countries; that Complainant’s show is viewed by 50 million people weekly across the wider Pan-Arab region and worldwide.”
Setting aside the problem of timing—<desertstorm.com> predated trademark acquisition, which is an issue for the third (not the second) requirement of bad faith—the phrase can have multiple associations other than Complainant’s brand. For Respondent “The “name ‘Desert Force’ is a descriptive term intended to support the loyal troops of Saudi Arabia whom refer to themselves as the ‘Force of the Desert.’” Respondent explained that he was born and raised in Riyadh, Saudi Arabia: “Of course, the Saudi Arabian terrain is mostly desert, hence the name ‘Desert Force.’ Respondent prides himself in having cousins, uncles and grandfathers whom (sic) refer to themselves as the Force of the Desert or Desert Force. That slogan has been used to describe such men for generations, far before that phrase or any similar such phrase was used in any commercial capacity.”
To say this, of course, is not conclusive of rights or legitimate interests, but distinguishing between associations, even pointing out the cultural longevity of the phrase before it was appropriated by the U.S. military makes it harder for Complainant in X specifically or for complainants in general owning other common couplings to sustain an argument of exclusive right to terms. Conversely, as associations (whether these are common phrases or dictionary words that have acquired distinctiveness) become fixed to specific complainants or brands a respondent’s rebuttal burden grows immeasurably harder; so hard in fact that respondents typically do not appear and defend their registrations.
However, where an association is not fixed even claiming a trademark is famous cannot negate a respondent’s lawful registration. This is precisely the Panel’s point in X:
The Panel notes that Complainant’s trademark is a “descriptive” or “dictionary phrase” and the possibility exists for the term “desert force” to be used in its normal sense. The Panel accepts that the meanings ascribed to the term by Respondent are reasonable.
Not only is the manner in which Respondent intends to use the term “reasonable” but there is no evidence from Respondent’s website of any “offerings, sponsored links or other indications of commercial activity” that would suggest any attempt to take advantage of Complainant’s reputation. Now, this finding alone generally ends the proceeding, although even had the Panel passed on the issue of rights or legitimate interests the timing of registration and degree of reputation (if common law principles are invoked) were conclusive against the Complainant in X under paragraph 4(a)(iii) of the Policy.
In deliberately limiting this discussion to paragraph 4(a)(ii) I mean to highlight a critical evidentiary step for complainants. To assert that respondent lacks rights or legitimate interests in a domain name that incorporates complainant’s trademark (in whole or in part, identical or confusingly similar) in essence is a step to proving abusive registration in that it eliminates another’s right to the domain name, but it can only succeed if the facts and inferences permit such a conclusion.
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. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.