Attorney Steve® Domain Dispute Essentials - [UDRP Domain Name Disputes] – Who needs to prove what?

September 2022 Update:  After my firm was attacked by an over-reaching trademark owner (who just so happens to be a competing firm in my highly successful Strike 3 BitTorrent defense practice area), and after they were declared to be a Reverse Domain Name Hijacker ("RDNH") in a UDRP arbitration proceeding held in front of WIPO, I sued the perpetators (two IP lawyers, one from Texas, and one from Chicago, Illinois), in Arizona for Wrongful Institution of a Civil Proceeding - a tort in Arizona.  They are currently fighting jurisdiction in Arizona and we will keep you all posted after the judge rules.

Here is a video discussing the UDRP RDNH decision.

Introduction

When you are involved in a UDRP domain name dispute (for example with WIPO or the National Arbitration Forum) you need to know who has to prove what, meaning, who has the Burden of Proof.  This blog will give you a general understanding of what you need to know.

The three-prong test for UDRP success

In order to succeed on the Complaint, a Complainant must evidence (PROVE) each of the three elements required by paragraph 4(a) of the Policy, namely that;

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name;  and

(iii) the disputed domain name has been registered and is being used in bad faith.

If the complainant cannot prove ALL THREE, they lose and Respondent wins and keeps the domains. 

Let's look at these three elements in closer detail.

Domain is identical or confusingly similar to a trademark or service mark

Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.

It has been a consensus view among UDRP panels that if the Complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.

Respondent can show a "legitimate interest" in registering the domain name

Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:

(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;

(ii) it has been commonly known by the domain name;

(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Registered and Used Domain Name in Bad Faith

Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith.  This non-exclusive list includes:

“(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 website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Domain Dispute Cases

Here are some of the types of cases we may be able to assist you with (call for details).

1. WIPO domain arbitrations
2. NAF domain disputes
3. Disputes involving your (U.S. domain holder) domain brought in CIIDRC (Canadian International Internet Dispute Resolution Centre)
4. Federal trademark litigation
5. Typosquatters
6. Social media "handle" squatters (ex. squatters registering your trademark name on Pinterest, Facebook, Twitter, YouTube and other sites)
7. Purchase and sale of expensive domains (make sure you have done your due diligence)
8. Disputes with marketplaces such as Sedo
9. Trademark registration
10. Trademark cancellation

Call us if your needs are not listed above.

Contact a UDRP domain name dispute lawyer

Since 2004, our boutique intellectual property law firm has helped companies of all sizes enforce their IP and defend against frivolous claims.  In the UDRP setting, frivolous claims can trigger claims for malicious prosecution (wrongful institution of civil proceedings), reverse cybersquatting (ACPA claims), RDNH, and the like.  If you have a dispute involving a domain name or names, call us our our domain dispute hotline at (877) 276-5084.