No Rights or Legitimate Interests in the Disputed Domain Name for Proving the Second Element in UDRP Proceedings
by Ivan Lipshitz, Adv., JMB Davis Ben-David
In this series I discuss and analyze the interface between Trademarks and Domain Names. My earlier articles in this series can be found here, here and here.
As previously noted, in order to succeed in a complaint under the UDRP, the complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are 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.
In the present article I delve into case analyses and explore real case scenarios relating to the “no rights or legitimate interest” legal concepts for proving the second element in UDRP proceedings.
No Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name. To prevail, a complaint must prove that respondent has either no right or legitimate interest or lacks both. The disjunctive “or” underlies the distinction between a “right “ and a “legitimate interest.” Registrants who have legally enforceable rights can also be said to have legitimate interests, but those that only have a legitimate interest have no legal rights. They may have something less than a “legal right.“ The distinction therefore between a ” legal right” and a “legitimate interest” is significant and intended to cover those situations where the registrant may not have a legal right per se, but where it nevertheless has a bona fide association or connection with the domain name itself, for example, where the respondent has not registered the domain name for merely speculative reasons. Thus, operating a business unrelated to complainants` with a domain name composed of common words may be sufficient to support a legitimate interest.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances, any of which, if found by the Panel to be proved, shall demonstrate the respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely: “[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your (respondent`s) rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you (respondent) of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the exclusive knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of proof shifts to the respondent to come forward with any allegations or evidence to rebut the complainant’s prima facie case and show it does have rights and legitimate interest in the disputed domain name. If the respondent fails to come forward with such relevant evidence, a panel will typically find that the complainant has established that the respondent has no rights or legitimate interests in the disputed domain name and the complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy (See section 2.1 of the WIPO Overview 3.0).
An analysis of some recent UDRP panel decisions reveals that, upon review of the overall facts and evidence presented, panel decisions have confirmed the application of the above legal principles and have found that the respondent in each of the below- mentioned cases had no rights or legitimate interests in the domain name concerned, and thus no rights under Paragraph 4(c) of the Policy: Subsea 7 Limited v. James Huntley WIPO Case No. D2023-2481 where the use that had taken place of the disputed domain name resolved to an inactive website and was used to impersonate the CEO of the complainants. Panels have categorically held that the use of a domain name for illegal activity (for e.g. swindle, phishing, identity theft, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. In Landis+Gyr AG v. 王志安 WIPO Case No. DCN2023-0034, the panel noted that there were no elements in this case that pointed to the respondent having made any reasonable and demonstrable preparations to use the disputed domain name which directed to an inactive website in connection with a bona fide offering of goods or services. The Panel therefore concluded that holding a domain name passively, without making any use of it, does not confer any rights or legitimate interests on the respondent. There is also the case of WK Travel, Inc. v. SAMI SUHAIL KHUB WIPO Case No. D2023-1653 finding that by not submitting a response, the respondent failed to invoke any circumstances which could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. The disputed domain name in this case (i) consisted of the complainant’s trademark plus the addition of the term “haven”, and (ii) had been used in relation to a website displaying the complainant’s trademark that offered and promoted services/products that were comparable to those offered by the complainants. The panel found that the disputed domain name was inherently misleading (see section 2.5.1 of the WIPO Overview 3.0) and that its use carried with it a risk of implied affiliation to the complainant. The following are some other cases illustrative of a panel`s approach to the above principles: Comair Limited v. xiao xing, lan tian ji tuan WIPO Case No. D2023-2057 finding that the respondent had not rebutted the Complainant’s prima facie showing of lack of rights or legitimate interests in the disputed domain name concerned and thereby the panel drew an adverse inference from respondent`s non- response; Jewelry By Johan Inc. v. Sean Corliss / Sean S Corliss Claim Number: FA2308002058099 accepting Complainant`s argument that respondent failed to use the <jewelrybyjohans.shop> domain name for a bona fide offering of goods or services or a legitimate non-commercial or fair use because it used it to compete with complainant. Using a disputed domain name to compete with a complainant is not a bona fide offering of goods or services under the Policy or a legitimate non-commercial or fair use. (See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017); and C F E B SISLEY v. Ahkey key WIPO Case No. D2023-2574 where the disputed domain name was used to redirect internet users to a website which copied the complainant’s logo to make internet users believe that they had actually accessed the complainant’s website. Past UDRP panels have confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598, Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211).
In all the above cases, the respective panels found, on the evidence before it, that the respondent had not rebutted the prima facie case evidenced by the complainant and was therefore unable to invoke any of the circumstances set out in paragraph 4 of the Policy to demonstrate rights or legitimate interests in the disputed domain name and could not assert that it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In light of the foregoing, the applicable panel found that the complainant had established an unrebutted prima facie case that the respondent lacked rights or legitimate interests in the disputed domain name and concluded that paragraph 4(a)(ii) of the Policy was satisfied.
Circumstances in which Respondent had Rights or Legitimate Interests
In contradistinction to the above scenarios, the use of a domain name for non-commercial free speech by way of fair use or for purposes of criticism can in principle support a legitimate interest under the Policy ( see section 2.6 of the WIPO Overview 3.0.) To support such fair use, a respondent’s criticism must not be a pretext for cybersquatting, commercial activity, or tarnishment. In Calik Holding Anonim Sirketi v. Murat Terzioglu, ZEHIR WIPO Case No. D2023-2704, the panel found that there was no evidence that the respondent had used, or attempted to use, the disputed domain name <calik.net> to target the Complainant or its trademark in its almost 15 years of prior use. The content of the disputed domain name also had connotations other than indicating the Complainant or its trademark. There had been no obvious attempt to trade off the Complainant’s or any third party’s rights over a very extended period of time. As such, the panel held that having regard to the very long period in which the disputed domain name had been registered but not used to target the Complainant or its trademark or otherwise take advantage of the resemblance of the disputed domain name to the complainant’s trademark, and the potential for its use in relation to its descriptive or surnominal significance in Turkey outside the sphere of the complainant’s operations, the panel found that the complainant had not established, in all the circumstances, that the respondent does not have rights or legitimate interests in the disputed domain name. In MXC Foundation GmbH, MXC Foundation LLC v. Tomas Ambrazas WIPO Case No. D2023-2309 the disputed domain name, <mxcscam.com>, was used for the purposes of a criticism website which accused the complainant of operating a “scam” whereby customers of the complainant were allegedly unable to withdraw tokens which they had obtained by doing business with the complainant. The website used strident language and eye-catching images, including a photograph of the complainants’ CEO supposedly drinking a cocktail on the Hawaiian Islands. In the view of the panel, the criticism site supported respondent`s rights or legitimate interest. Thus, where a domain name comprises a trademark together with a derogatory term (e.g., “sucks”), UDRP panels have tended to find that a respondent has a legitimate interest in that domain name, and that the complainant has failed to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Thus, the UDRP complaint in such circumstances will necessarily fail.
The above panel decisions underscore the significance and importance of providing sufficient evidence for a UDRP panel to assess and evaluate a complainant’s or respondent`s case under paragraph 4(a)(ii) of the Policy. Failure to do so can be fatal to a complainant`s or respondent`s case. As a complainant or respondent you must ensure that all allegations and statements made to your lawyer and to be relied upon in your case before a UDRP panel are backed up and supported by irrefutable evidence which can be adduced in the complaint or in its rebuttal in UDRP proceedings. You are advised to gather and meticulously maintain all records relating to your own use and the use by your adversary of your trademark and the disputed domain name at issue. Use resources like the Internet Archive Wayback Machine to capture relevant screenshots and manage and search historical collections of digital content for the purposes of proving or disproving the “no rights or legitimate interest” principle in terms of paragraph 4(a)(ii) of the Policy.
As illustrated by the above panel decisions, cases are won and lost on the strength of the evidence presented.
If any of your trademarks may be subjected to domain name abuse and you need assistance to file a domain name dispute resolution complaint to secure or enforce your digital brand, or need assistance in developing an enforcement strategy to safeguard your digital assets from all forms of infringement, violation and abuse,or where a trademark holder is challenging your domain name, please email Ivan Lipshitz at: Ivan.Lipshitz@jmbdavis.com or JMBmail@jmbdavis.com.