Wednesday, February 4, 2015

UDRP Logic: Trademark Must Come Before Domain Name To Find 'No Right or Legitimate Interest'

By Zak Muscovitch.

Recently I reviewed a UDRP decision that deserves additional attention and respect. The case was Riveron Consulting, L.P. v. Stanley Pace, and it was decided by Paul M. DeCicco in 2010. It concerned the domain name, RIVERON.COM. Of particular interest however, was how the Panelist approached the issue of "Legitimate Interest" in a logical fashion.

For a complainant to succeed in a UDRP case, the complainant must of course meet each part of the three-party UDRP test. The second part of the UDRP requires the complainant to prove that the respondent (the domain name registrant) has no rights or legitimate interest in the disputed domain name.


In examining this part of the UDRP test, the Panelist noted the well-established and widely accepted general approach to the burden of proof to be employed when determining if a respondent has no rights or legitimate interest:



"Complainant must first make out a prima facie case showing that Respondent lacks rights  and legitimate interests in the disputed domain names pursuant to paragraph 4(a)(ii) of the  Policy. The threshold for such prima facie showing is low.  See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).  Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights and legitimate interests in the at-issue domain name."

Accordingly, the Panelist noted that it first falls to the complainant to make out the appearance of a case that the respondent has no rights or legitimate interest. It is only once the complainant accomplishes this first task, that the respondent must then answer the case by proving its rights or legitimate interest. So, for example, typically a complainant will make a variety of basic allegations that constitute a "prima facie case" that the respondent has no legitimate interest (such as the respondent is not known by the domain name, has not used the domain name, or has no license to use the mark corresponding to the domain name, etc.). Then, typically, the respondent will have to rebut this prima facie case, by showing that it does indeed have a legitimate interest, such as for example, by having used the domain name in a bona fide fashion for business, email, etc.

But it is the next part of the Panelist's analysis that really stands out and is quite compelling:



"Because the <riveron.com> domain name registration pre-dates Complainant’s trademark registration as well as Complainant’s first use of the  RIVERON mark... Complainant logically needs to show either that it had common law trademark rights in RIVERON at the time the disputed domain name was registered despite the first use date reflected on its USPTO registration...

Without evidence of either Complainant’s trademark rights at the time of the at-issue domain name’s registration, or a showing that Respondent somehow lost any rights and interests in the domain name, there is no foundation from which to conclude that Respondent is, or was, legally bound to license the mark from the Respondent. 

If Respondent had no duty to license the domain name before registering it, then the fact that there was no license from Complainant and the fact that Respondent did not commonly go by the domain name, are each ultimately immaterial regarding paragraph 4(a)ii."

The Panelist is essentially saying, that logically, a complainant simply cannot make out a prima facie case against a respondent, i.e. cannot claim that the respondent has no rights or legitimate interest in a domain name, when at the time of registration, the complainant itself had no rights or interest in a trademark corresponding to the domain name. In other words, it is preposterous to claim that a respondent has no right or legitimate interest in a domain name, when at the time that he registered it, the complainant was not even in existence, and accordingly, such a preposterous claim surely cannot constitute a "prima facie case". Who is the complainant to say that the respondent has no rights or legitimate interest in a domain name that was created before the complainant was even incorporated or used a corresponding trademark, for example? 


Usually, panels will just take a look at how the domain name was used by the respondent since it was registered. If it was not used at all, or if it was used for PPC advertising alone, often a panel will find no legitimate interest, despite plenty of cases to the contrary. But what this Riveron case shows, is that logically, a panel should first determine if the complainant can even meet the prima facie test by showing its own rights at the time of domain name registration, before even looking at how the respondent has used the domain name. If it was any other way, it would be illogical, as in the case of a domain name which precedes a trademark, as between the respondent and the complainant, there is only one party that could conceivably have any rights or interest at all; and that of course must be the respondent, since the complainant had no rights at all at that time.