Category Archives: Prima facie case

Assessing Evidence for Right or Legitimate Interest

Posted on February 15, 2012 by Gmlevine

Assigning burdens in a UDRP proceeding is well established. For all paragraph 4(c) defenses respondent’s proof must establish “past” and “present” as opposed to “future” use of the disputed domain name. Thus, for paragraph 4(c)(i) respondent must demonstrate its “[present and past] use of” or “demonstrable [present] preparations to use” the domain name constitutes a right or legitimate interest; for paragraph 4(c)(ii) the respondent must demonstrate that it is “commonly known” by the domain name from a point in time that precedes its registration; and in paragraph 4(c)(iii) the proof is the manner in which the domain name is being used “now.” Intended future use unaccompanied by evidence of present use is not a good defense under either 4(c)(i) or … Read the rest

Posted in Abusive intent, Burden of proof / persuasion, Legitimate use, Paragraph 4(b) of the Policy, Paragraph 4(c) of the Policy, Prima facie case, Shifting burden of proof, Targeting / Not targeting | Tagged , | Leave a comment

Parties in Same Business and Operating in the Same Geographical Area

Posted on January 24, 2012 by Gmlevine

Distance is not only geographical and temporal but also measured by product or service offerings. The principle underlying temporal distance is that the respondent could not have registered the domain name in bad faith if the trademark had not then come into existence. Subsequent bad faith use (except in the view of panelists who argue for “retrospective” bad faith) is not grounds for forfeiture of the domain name under UDRP. The greater the distance of all three combined the less likely that the complainant can prevail on the bad faith element, which is the ultimate test.

Geographical distance by itself does not favor the respondent’s good faith claim, but temporal distance (acquiring the domain name prior to existence of the … Read the rest

Posted in Denial of knowledge, Geographic distance, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Prima facie case, Totality of facts, Website content | Tagged , , , , | 1 Comment

Respondent’s Right or Legitimate Interest Trumps Complainant’s Trademark Right

Posted on January 3, 2012 by Gmlevine

There have been a number of cases lately in which complainant has either failed to prove a prima facie case or been unable to overcome respondent’s evidence of its right or legitimate interest in the disputed domain name. Respondent’s use of the domain name is a critical factor, but so too is the trademark. Longevity and recognition in the marketplace cannot trump a respondent’s right or legitimate interest unless it fails to offer affirmative evidence of its choice.

A respondent’s loss of its trademark for failure to file a declaration of use between the 5th and 6th years of registration is not fatal to either its right or legitimate interest in a domain name. Stonz Wear, Inc. v. Framez l-Wear… Read the rest

Posted in Defenses, Good faith registration, Insufficiency of evidence, Para. 4(a)(ii) of the Policy, Para. 4(c)(ii) of the Policy, Prima facie case, UDRP Rule 10(d) (evidence), UDRP Rule 15(a) | Tagged , , , , | Leave a comment

Missing Evidence in Failing to Prove Prima Facie Case

Posted on October 5, 2011 by gmlevine

Panels early recognized that complainant could likely not marshal conclusive proof that respondent lacked rights or legitimate interests in the domain name because the evidence was under the respondent’s custody and control. The solution agreed upon within a few months of the inception of the UDRP proceedings was to lower the proof bar and shift to the respondent a burden of going forward. This allowed the complainant to succeed in proving a prima facie case, but not in offering one. Once a prima facie case is offered it is subject to rebuttal, which requires respondent to establish its right or legitimate interest if it can by proving a paragraph 4(c) defense. The low bar for the complainant does not mean … Read the rest

Posted in Abusive intent, Para. 4(a)(ii) of the Policy, Prima facie case, Targeting / Not targeting, UDRP Rule 10(d) (evidence), Unregistered trademark, Wayback machine | Tagged , , , , | Leave a comment

What It Means To Be "Commonly Known By the Domain Name"

Posted on June 26, 2011 by gmlevine

Paragraph 4(c)(ii) of the Policy is written in the past tense, “have been commonly known by the domain name” (emphasis added). Although the Policy does not specify when respondent was known by the domain name the language suggests that it must have been from a time that preceded the registration of the domain name. In Omni Development, Inc. d/b/a The Omni Group v. Graffle, Inc., FA1104001385743 (Nat. Arb. Forum June 14, 2011) the respondent’s corporate name is the domain name, <graffle.com>, which is identical to the Complainant’s trademark. By happenstance the Respondent’s corporate name is the same as the trademark. This would seem to qualify for the defense.

The Whois directory is a first stop in determining the respondent’s … Read the rest

Posted in Abusive intent, Commercial gain, Commonly known by, Para. 4(c)(ii) of the Policy, Prima facie case, Typosquatting | Leave a comment