BURDEN OF PROOF IN UDRP ACTIONS

IVAN HOFFMAN, B.A., J.D.


        Under the Uniform Domain Name Dispute Resolution Policy (UDRP), each party has differing obligations regarding proving their respective case or defense.  The Claimant, the party who claims rights in a trademark, has to prove certain elements.  The Respondent, the party who has registered the disputed domain, has other elements to prove.  These issues are not theoretical, legal “mumbo jumbo” but often make the difference between a party winning or losing the case.

        As in most litigations, the UDRP is a mix of both substance (i.e. what kind of proof will suffice) as well as procedure (i.e. which party must produce what kind of evidence).  The term “burden of proof” means essentially what it says…which party bears the responsibility for producing legally sufficient evidence as to each element of either a complaint or, as indicated below, a defense.

        And because of the respective burdens of proof, often even if a Respondent fails to reply to a complaint, the Complainant may still lose the case if it has failed produce evidence to sustain its burden.

Claimant’s Burden of Proof

        These are the relevant sections of the UDRP.  Initially, section 4 provides what elements of the complaint are part of the burden of proof that the Complainant must sustain.  The Complainant must prove that:

i. your [i.e. Respondent’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
ii. you have no rights or legitimate interests in respect of the domain name; and
iii. your domain name has been registered and is being used in bad faith.
        The above provisions mean that it is up to the Complainant to demonstrate that it has rights of trademark in a mark.  These rights can be as a result of registration of that mark in the United States or another country as well as rights that come even without formal registration.  These latter rights derive from what, in the United States, is referred to as a common law right based on having developed a “secondary meaning.”  This means that when a person hears the word that is the mark that person relates that word specifically to the Complainant.  For more on this, read “Julia, Jimi and Cybersquatting” and “Bruce and Julia: A Domain Name Case Study.”   One panel ruled in favor of the actress Julia Roberts based on this secondary meaning but another panel ruled against the performer Bruce Springsteen who also had an unregistered mark.  Thus, this element of the burden of proof can be something other than a “given.”  Moral: register your marks for federal trademark protection.

        Moreover, the Complainant must also prove that the domain is identical or confusingly similar to the trademark.  This may seem a simple thing and in many instances it is but there are instances as well where the question arises.  Cases have gone in differing directions over issues such as the addition of “sucks” to a trademark for instance.  Also see the discussion in “Descriptive Domain Names.”

        Further, the Complainant has the initial burden to demonstrate that the Respondent has “no rights or legitimate interests” in the domain.  As you will see below, when the Complainant makes a “prima facie” case in this regard, it is then up to the Respondent to assume the burden of proving that the Respondent does have such interests.  Read “Legitimate Interests in Domain Name Disputes.”

        Finally, the Complainant has to produce evidence of both the registration and the use of the domain in bad faith.   The UDRP states:

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, (Emphasis added) shall be evidence of the registration and use of a domain name in bad faith:
i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
        I have written about what the above elements mean in “Domain Name Disputes-An Update” and you should read that article in this regard.  The purpose of the within article is to speak to the issues of burden of proof.

        As indicated above, even if the Respondent fails to appear and contest the action, the Complainant must still plead and prove these elements.     The UDRP provides:

In the administrative proceeding, the complainant must prove that each of these three elements are present. (Emphasis added).

Respondent’s Burden of Proof

        As mentioned, once the Complainant produces evidence sufficient to establish that the Respondent has no “legitimate interests” in a domain, it is then incumbent on the Respondent to produce evidence that the Respondent has such legitimate interests.  In a civil proceeding, this would be the rough equivalent to what is known as an “affirmative defense” and as to such defenses, the party claiming that defense, i.e. the Respondent here, has the burden of proving that the elements of that defense are true.

        The UDRP provides:

c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, (Emphasis added) shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
i. before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
        Again, the purpose of this article is to discuss the respective burdens of producing evidence and you can read about the substance of the above matters in the article “Legitimate Interests in Domain Name Disputes.”

Conclusion

        Because the UDRP is a worldwide policy and because there are panels who preside over these disputes from many different backgrounds, cultures and legal systems, at least as of now there is no true uniformity in terms of how any of the substantive or procedural issue will come out.  Lack of predictability can be disconcerting for parties and their attorneys.

        Such is the state of things today.

© 2001 Ivan Hoffman

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This article is not intended as a substitute for legal advice.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  You should consult with an attorney familiar with the issues and the laws.
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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

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