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Respondent’s Burden of Production

Paragraph 4(a)(ii) of the Policy is the fulcrum test for both parties. If the respondent demonstrates that it has a right or legitimate interest in the domain name it concludes the proceedings regardless of the complainant’s trademark rights. But, to demonstrate a right or legitimate interest the respondent must either come forward with concrete evidence or the record is insufficient to establish the complainant’s prima facie case. Student Price Card Ltd. v. Victor Trasoff, FA0911001292958 (Nat. Arb. Forum December 23, 2009) (<>), citing a string of cases from UDRPs first year of operation. The shifting the burden approach entered the UDRP vocabulary tentatively in April 2000 in two cases by the same panelist [EAuto, Inc. v., d/b/a, Inc., D2000-0120 (WIPO April 13, 2000) and EAuto, L.L.C. v. EAuto Parts, D2000-0096 (WIPO April 9, 2000)]. It took several more months to solidify as a rule in the decision process [D2000-0252, 0270, 0374, 0624]. A complainant is not expected to prove a negative proposition – facts that are “uniquely within the Respondent’s knowledge and control,” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000). Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden shifts to the respondent to produce rebuttal evidence.

At its simplest a prima facie case requires the complainant to establish that in using the domain name the respondent is not making a bona fide offering of goods or services [paragraph 4(c)(ii)], is not commonly known by the domain name [paragraph 4(c)(ii)] and is not making a legitimate noncommercial or fair use of the domain name or otherwise justified in using the domain name on free speech principles [paragraph 4(c)(iii)]. If the respondent defaults in appearance the record is limited to the complainant’s submission, although it may be enlarged by an investigation undertaken by the Panel as was the case in General Electric Company v. Estephens Productions, D2009-1438 (WIPO December 17, 2009).

In Student Price Card as in many other UDRP cases the Respondent failed to answer the complaint. Even if it could be argued that each part of the domain name is generic or descriptive, the combination of “spc” and “card” is specific to the Complainant. In cases in which the complainant loses against an absent respondent the trademark or the combination of words are simply too common to charge the respondent with knowledge or if it did that it had the complainant in mind. Dependable Staffing Services, LLC v. Ramesh Prasad, D2009-1206 (WIPO November 12, 2009) (<> and <>).

The paragraph 4(b) examples of bad faith refer to both registration and use. Thus, if the respondent offers to sell the domain name to “anybody,” but in reality only the trademark holder can use it, it supports two conclusions, first that the respondent has no right or legitimate interest in it; and, second that it registered the domain name for a prohibited purpose. In Student Price Card, the Respondent’s website when active had contained hyperlinks to Complainant and Complainant’s competitors in the discount and credit card services industry, but was presently inactive. Passive holding is bad faith when by direct evidence or inferentially the trademark holder is the only party legally entitled to use the symbol, a legal principle laid down within the first month of UDRP’s initiation.

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