Domain Name Panelists Meeting October 16, 2006 VII. Burden of Proof Under the UDRP

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1 Domain Name Panelists Meeting October 16, 2006 VII. Burden of Proof Under the UDRP Warwick Smith Barrister and Arbitrator Bankside Chambers Auckland, New Zealand

2 Overview of Presentation Relevant Provisions of the Policy and the Rules Some Specific Issues The standard of proof generally Proof when there is no Response Proof of a Right or Legitimate Interest Legitimate Interests in Generic Words (Para. 4(a)(ii)) Bad Faith how much knowledge should the Panel attribute to Respondent? ( constructive knowledge ) Reverse Domain Name Hijacking When should the Panel call for more evidence? How far should the Panel go in making its own enquiries? 2

3 Relevant Provisions of Policy Policy, Para. 4(a) Complainant must prove each of the three elements Policy, Para. 4(b) The following circumstances... shall be evidence... Policy, Para. 4(c) Any of the following circumstances shall demonstrate your rights or legitimate interests Policy, Para. 2 - (b) to your knowledge, the registration will not infringe upon or violate the rights of any third party 3

4 Relevant Provisions of the Rules Para. 3(b)(xiv) Complainant s Certificate To best of Complainant s knowledge, information in Complaint accurate and complete Para. 3(b)(xv) Complainant to annex copy of any trade mark registration and other documentary evidence Para. 5(b)(viii) and (ix) Corresponding obligations on Respondent Para. 5(e) - If no response, in absence of exceptional circumstances, Panel to decide the dispute based upon the Complaint. 4

5 Relevant Provisions of the Rules cont d Para. 10(d) Panel to determine admissibility, relevance, materiality and weight of the evidence. Para. 12 Panel may request further statements or documents from either party Para. 14 Time default Absent exceptional circumstances, Panel shall proceed to a decision on the Complaint. Failure to comply with Rules or Panel requests absent exceptional circumstances, Panel shall draw such inferences therefrom as it considers appropriate. Para. 15 Panel to decide Complaint, based on the statements and documents submitted, the Policy, and any principles of law it deems applicable. 5

6 The Standard of Proof Generally The civil standard (is it more likely than not?), or the criminal standard (beyond reasonable doubt)? Starting point the civil standard Recent example Barry D Sears PhD v. Zalman Duchman, WIPO Case D must provide a sufficient prima facie basis for finding confusing similarity with the Complainant s marks/ and then for inferring that more probably than not the respondent has no right or legitimate interest in the Domain Names and has registered and used them in bad faith. (citing Croatia Airlines v. Modern Internet Ltd, WIPO Case D ) 6

7 The Standard of Proof Generally cont d A different approach if a Response is filed? No discovery No cross-examination Potential serious consequences of bad faith finding ( calling respondent a liar ) Can the Panel fairly conclude that the respondent s explanation is not plausible? 7

8 The Standard of Proof Generally cont d Recent illustrations three-member panel decisions in Jet Marques v. Vertical Axis Inc., WIPO Case D ( significant doubts about that denial, but in the end it is not in a position to say that the denial is clearly false. and Shoulderdoc Limited v. Vertical Axis Inc., WIPO Case D Respondent denied knowledge of Complainant given the descriptive nature of the term shoulder doc that claim is not inherently implausible. 8

9 The Standard of Proof Generally cont d What if the Response says there is no evidence or no proof that the Respondent knew of the Complainant (no outright denial of knowledge)? See Outerwears Inc. v. Domain Asia Ventures, WIPO Case D No explanation for choice of domain name, which was identical to the mis-spelt expression which was Complainant s mark. Respondent an experienced domain name operator. The Panel inferred knowledge, saying: Proof by Complainant of a positive fact, such as Respondent s knowledge of Complainant s trade mark, is difficult and may be impossible in the case where the facts are uniquely within the possession of the party that has resisted making a positive statement of lack of knowledge." 9

10 Proof When There is No Response Consensus View Complainant must still establish each of the three elements in para. 4 (a), by producing actual evidence. See Brooke Bollea a.k.a. Brooke Hogan v. Robert McGowan and the other cases referred to at para. 4.6 of the WIPO Overview. For more recent examples, see Early Learning Centre Ltd v. Kiansu Thoi, WIPO Case D and Barry D Sears PhD v. Zalman Duchman, WIPO Case D Are statements certified under Para. 3(b)(xiv) of the Rules enough on their own? Rules, para. 3(b)(xv) annex copies of trade mark registration or other documentary evidence Refer Texans for Lawsuit Reform Inc. v. Kelly Fero, WIPO Case D

11 Proof of a Right or Legitimate Interest para. 4(a)(ii) Consensus View Complainant required to make out a prima facie case. Burden then shifts to Respondent to demonstrate rights or legitimate interests. If Complainant fails to do so, Complainant has satisfied para. 4(a)(ii). Refer to WIPO Overview, section

12 Generic Words which are inherently valuable Does the Panel need to decide if the Respondent has a legitimate interest? Basic position If Respondent is using a generic word to describe his product / business or to profit from the generic value of the word without intending to take advantage of Complainant s rights in that word, then it has a legitimate interest (WIPO Overview, section 2.2, applied in the Jet Marques and Shoulderdoc Limited cases). Intent to take advantage of Complainant s rights - likely to be a critical issue under para. 4(a)(iii) bad faith. May be easier to resolve the issue under para. 4(a)(iii), where Complainant carries the burden of proof. 12

13 Bad Faith attributing knowledge of Complainant s Mark to Respondent WIPO Overview, section 3.4 most panels have declined to introduce a concept of constructive notice to the UDRP. Exception where US-registered mark and Respondent located in U.S. Recent example of Panel strongly rejecting any doctrine of constructive knowledge. Linear Technology Corporation v. Spiral Matrix, WIPO Case D But contrast Media General Communications Inc. v. Rarenames, Web Reg, WIPO Case D (wcmh.com) The Policy implicitly requires some good faith effort by Respondent to avoid registering and using domain names corresponding to trade marks in violation of the representations in Para. 2 of the Policy. 13

14 Bad Faith attributing knowledge of Complainant s Mark to Respondent cont d The Panel must consider, as have several previous UDRP panels, whether the Respondent s apparent disregard for the likelihood that the Domain Name corresponded to a distinctive trade mark is itself evidence of bad faith in the registration and use of the Domain Name and A four-letter string beginning with w should have triggered some further investigation [by the Respondent] to ensure that the registration would not infringe upon or otherwise violate the rights of a third party or deprive it of the opportunity to use a domain name corresponding to its mark. 14

15 Reverse Domain Name Hijacking Definition using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name (Rules, Para. 1) Onus on Respondent Mere lack of success by Complainant not enough Allegation upheld where Complainant knew Respondent using domain name as part of a bona fide business (Deutche Welle v. Diamondware Limited, WIPO Case D ) Should Complainant have appreciated at the outset that it had no hope of success? (Yell Limited v. Ultimate Search, WIPO Case D , referred to in Jazeera Space Channel TV Station v. A.J. Publishing, WIPO Case D ) Non-RDNH bad faith use of the Policy Rules, Para. 15(e) harrassment 15

16 When Should the Panel Call for Additional Evidence/Submissions? In Panel s discretion Rules, para. 12. When procedural fairness requires that a party should be permitted to respond e.g. where respondent alleges reverse domain name hijacking. When Complaint contains some gap or defect, and it appears highly likely that the gap or defect can be cured by filing a supplementary statement (e.g. Creo Products v. Website in Development, WIPO Case D , Brown Thomas and Company Limited v. Domain Reservations, WIPO Case D ; and Auto-C v. MustNeed.com, WIPO Case D ). Only resort to Para. 12 of the Rules in exceptional circumstances? e.g. Blemain Group v. Mr Stuart Frost, WIPO Case D (decision of Mr Tony Willoughby). 16

17 When Should the Panel Call for Additional Evidence/Submissions? Cont d What if you don t understand some part of the evidence and further information or clarification is necessary? Is that an exceptional circumstance? Does the sole discretion in Para. 12 of the Rules override the exceptional circumstances limitation on time extensions (Rules, Paras 10(c) and 15(b))? In all cases, bear in mind: Additional delay and expense not desirable (Rules, Paras 10(c) and 15(b), but Obligation on panel to decide Complaint in accordance with the Policy (Rules, Para. 15(a)) Parties must be treated with equality and each must have a fair opportunity to present case (Rules, Para. 10(a)). 17

18 Enquiries Conducted by the Panel WIPO Overview, Section consensus view Panel may visit website linked to domain name Panel may undertake limited factual research into matters of public record. What about Wayback Machine / 18

THE INSTITUTE OF ARBITRATORS & MEDIATORS AUSTRALIA ADMINISTRATIVE PANEL DECISION MATTER NO. 3167

THE INSTITUTE OF ARBITRATORS & MEDIATORS AUSTRALIA ADMINISTRATIVE PANEL DECISION MATTER NO. 3167 IVF SUNSHINE COAST PTY LTD v. FERTILITY SOLUTIONS SUNSHINE COAST PTY LTD Domain Name: