Factual Circumstances Favoring Respondents


The mere fact that a significant proportion of proceedings are decided without any respondent participation – an equivocal advantage because default is not an admission under the UDRP as it is in a court of law – is no guarantee that the complainant will prevail; and, the incidence of dismissal or denial of the complaint is increased when the respondent appears and answers.   Loss of even an equivocal advantage is traceable to the complainant’s failure to observe the Policy’s evidentiary requirements. A handful of recent cases illustrate a variety of factual circumstances – some being self-created obstacles – favoring respondents that could potentially have been avoided with a proper understanding of the law applied to domain name rights. 
 
The burden or onus of proving the elements of each of the three requirements remains with the complainant throughout the proceedings, albeit lighter for Paragraphs 4(a)(i) and 4(a)(ii) and heavier for Paragraph 4(a)(iii).   The respondent keeps the domain name in either of two circumstances: it affirmatively proves its right or legitimate interest in the disputed domain name or the complainant is unable to prove bad faith registration and use.   Success in proving a respondent’s lack of rights or legitimate interests under Paragraph 4(a)(ii) is not conclusive, even though it may be a factor, in proving bad faith.
 
The following circumstances have been found to favor dismissal or denial of the complaint. 
 
Paragraph 4(a)(i)
 
    1) the complainant does not have a trademark, a problem generally associated with personal names and trade names, Margaret C. Whitman v. Domains For Sale, D2008‑1534 (WIPO December 1, 2008) ("Merely having a 'famous name' is not sufficient to establish common law trademark or service mark rights in the name); B C Furtney v. Afterthought Productions, FA0809001226494 (Nat. Arb. Forum November 17, 2008) (domain name lost for failure to renew registration).
 
    2) the domain name was registered prior to the accrual of the complainant’s trademark right [Paragraph 4(a)(i) of the Policy “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name,” Phoenix Mortgage Corp. v. Toggas, D2001‑0101 (WIPO March 30, 2001); Abuela Company LLC v. ARISU TECH, FA0808001222449 (Nat. Arb. Forum October 21, 2008) – “a respondent could not have registered or used its disputed domain name in bad faith when it registered the disputed domain name before the time that the complainant’s rights in the mark commenced”].
 
    3) the complainant alleges common law rights but fails to prove that the mark has acquired “secondary meaning” in the marketplace, NAOP LLC v. Name Administration Inc. (BVI), FA0808001220825 (Nat. Arb. Forum October 7, 2008).
 
   4) the complainant is found to have registered marks, but the trademark application contains admissions against interest, such as disclaiming the terms of the disputed domain name, Ideation Unlimited, Inc. v. Dan Myers, D2008‑1441 (WIPO November 12, 2008).
 
    5) failure to marshal private facts within complainant’s control, NA PALI SAS v. BWI Domains, Domain Manager, D2008‑1859 (WIPO January 27, 2009) (that its license authorized it to maintain a UDRP proceeding).
 
Paragraph 4(a)(ii)
 
    6) failure to marshal the minimum showing for prima facie case, Skyy Spirits LLC v. Stanislaw Krzenszczynski, FA0808001220829 (Nat. Arb. Forum November 26, 2008) (dismissed the complaint, without prejudice); Games Workshop Limited v. Admin, Domain, D2008‑1321 (WIPO November 27, 2008) – No information upon which to make an informed assessment as to whether or not the Respondent has any rights or legitimate interests in respect of the Domain Name. “One would have thought that some very basic online investigation ought to have provided some supporting evidence for the Complainant’s contentions.”
 
     7) trademark composed of generic terms or common words phrases; no evidence of knowledge or that domain name is being used to take advantage of the complainant’s reputation but used “because of its attraction as [a] dictionary word[], and not because of [its] value as [a] trade mark[],” Land Mark Group v. Digi Media.com, FA0406000285459 (Nat. Arb. Forum August 6, 2004) (<landmarks.com>) ; or, a neologism common in the industry, Super‑Krete International, Inc. v. Concrete Solutions, Inc., D2008‑1333 (WIPO October 14, 2008) (<supercrete.com>); or, scientific term, Hogrefe AG v. Ney Limonge, D2008‑1206 (WIPO October 3, 2008) (“rorschach”).
 
     8) failure to marshal public facts about the Respondent, Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited, D2008‑1768 (WIPO January 22, 2009).
 
Paragraph 4(a)(iii)
 
     9) Failure to prove bad faith in the conjunctive, use and registration, Norbert A. Aleman v. Crazygirls.com / Vertical Axis, Inc., D2008‑1252 (WIPO October 29, 2008).
 
In some of these instances the complainant cannot pass the threshold requirement – it either has no right it can prove or acquired its right subsequent to the registration of the domain name – and in other instances the complainant simply misapprehends the fundamentals of domain name jurisprudence; its evidence, such as it offers, is unpersuasive of abusive registration.