Category Archives: Burden of proof / persuasion

Insufficient Evidence for Respondent’s Lack of Rights or Legitimate Interests – Not Even the Iconic Trademark Owner Is Excused From Having to Offer Proof

Posted on April 10, 2013 by Gmlevine

Just as complainants cannot prevail on the strength of their trademarks which only proves the first requirement that it has standing to maintain the proceedings, so respondents do not forfeit their domain names on default of responding to the complaint. This message continues to be lost even to the most prestigious law firms and the wisest counselors. If nothing but suppositional allegations are offered as proof for paragraphs 4(a)(ii) or 4(a)(iii) relief will be denied. Should that verdict be applied to iconic trademarks such as AOL, as it was in AOL, Inc. v. ChengshuangLi, FA1302001483339 (Nat. Arb. Forum March 26, 2013)? The Panel made the following pronouncement: the “Complainant’s entire argument” on the issue of rights or legitimate interests … Read the rest

Posted in Abusive intent, Burden of proof, Burden of proof / persuasion, Cybersquatting / Not cybersquatting, Default, Insufficiency of evidence, Intent / Tartgeting, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Reputation in the marketplace, UDRP Rule 10(d) (evidence) | Tagged , | Leave a comment

Demonstrable Preparations for Use Before Notice

Posted on March 7, 2013 by Gmlevine

The 3-member Panel in Cheezburger, Inc. v. WeKnowMemes LLC (c/o Dynadot Privacy), D2012-2452 (WIPO February 19, 2013) considered confusing similarity between KNOW YOUR MEME and <weknowthemes.com> “a close question … [b]ut the overall impression is sufficiently similar, especially for the Domain Name used for a competing website, that the Panel concludes the first Policy element has been satisfied.” While this met the test for standing, it was insufficient in light of Respondent’s rebuttal evidence that before notice it had established a web based service. It is a complainant’s burden to demonstrate that respondent chose the domain name with the intention of taking advantage of the trademark.

Where a domain name is a phrase composed of dictionary words that is … Read the rest

Posted in Acttive / passive use, Burden of proof / persuasion, Common expressions, Cybersquatting / Not cybersquatting, Evidence, Generic/Descriptive terms, Legitimate use, Opportunism, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, UDRP, Website content, Website services | Tagged , | Leave a comment

Recovering Lapsed Domain Names

Posted on February 27, 2013 by Gmlevine

For a complainant to succeed in recapturing a lapsed domain name it must both anticipate and overcome respondent’s rebuttal that it has rights or legitimate interests in the domain name. To fail on the prima facie case is to fail utterly because failure ends the case. Geographic proximity may make a difference in the assessment as does the relative strength or weakness of the trademark, but these factors are not alone sufficient against a respondent’s persuasive explanation for choosing the lapsed domain name. This is true even where parties presently compete if there are intervening circumstances favoring respondent. An example of complainant’s challenge, how difficult it can be, is illustrated in PFIP, LLC v. Blast Fitness Group, LLC / Thomas … Read the rest

Posted in Abusive intent, Burden of proof / persuasion, Common law protection, Cybersquatting / Not cybersquatting, Descriptive phrases, Inadvertent lapse of renewal, Opportunism, Para. 4(b)(iv) of the Policy, Para. 4(c)(i) of the Policy, Timing of registration, Unregistered trademark | Tagged , , | Leave a comment

Offer to Purchase vs. Counter Offer

Posted on November 4, 2012 by Gmlevine

It makes a difference which party initiates a negotiation to sell or purchase a disputed domain name. In SIX Group AG v. Xedoc Holding SA, D2012-1548 (WIPO October 11, 2012) the Complainant’s cause for complaint concerned Respondent’s redirected use of as a pornographic website . But, “six” is a weak mark: “there is extensive third party use of the term ‘six’, both as trade marks and as domain names, and that it cannot by any stretch of the imagination be considered famous or exclusively associated with the Complainant.” The question of “rights or legitimate interests” in a domain name identical or confusingly similar to a trademark (however weak it may be) depends on use only if there is evidence … Read the rest

Posted in bad faith use, Burden of proof / persuasion, Complainant "in mind", Cybersquatting / Not cybersquatting, Defenses, Diverting to another website, Legitimate use, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Pay-per-click, Pornography, Targeting, Website content | Tagged , , | 1 Comment

Assessing “Improper Purpose” in Commencing a UDRP Proceeding

Posted on August 16, 2012 by Gmlevine

The 3-member Panel in Albir Hills Resort, S.A. v. Telepathy, Inc., D2012-0997 (WIPO July 19, 2012) makes an interesting comment that is central to its finding against Complainant of reverse domain name hijacking:

The Panel considers that the Complainant is represented by an attorney who should have appreciated that the Complaint could not succeed in the present proceeding since the disputed domain name was registered by the Respondent eight years prior to filing the trademark applications for SHA.

I’m underlining twice-over the phrase “represented by counsel who should have [known better].” Pro se complainants may be excused for not appreciating the finer points, and been excused. In commencing a UDRP proceeding the complainant is required to certify,“that the information … Read the rest

Posted in Burden of proof / persuasion, Complainant "in mind", Cybersquatting, Domain names, First to register, Later acquired trademark rights, Paragraph 4(b) of the Policy, Paragraph 4(c) of the Policy, Proof, Reverse domain name hijacking | Tagged , , , | Leave a comment