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Recent Case Notes & Commentary

Evidence Needed for Lack of Rights or Legitimate Interests

A recent decision highlights not only the need for evidence in all UDRP cases, rather than mere assertions, but the particular need for evidence to prove the lack of rights or legitimate interests in the disputed domain name.

The facts in St. John Knits, Inc. v. Wang Songxu, NAF Case, Claim Number: FA1209001461221 (decided on 5 October 2012) were not unusual at all and the case was undefended, so in the normal course of events, you could expect a ruling in favour of the Complainant and an order for transfer. The Complainant had a trademark, ST. JOHN and the Respondent had devised a domain name that used the entire trademark and just added “cn” at the end to create its domain name so the Complainant easily got to first base. But then, of course, it had to show the Respondent lacked a right or legitimate interest in the domain name, bearing in mind that it first had to show a prima facie to that effect, or perhaps we could say “ only “ a prima facie case (Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). But the Complainant did not put in any evidence to that effect at all, but simply made the assertion that “Complainant claims that Respondent lacks rights or legitimate interests in the domain name because Respondent fails to make a legitimate noncommercial or fair use of the domain name.”

The panelist decided that that was not enough because it was a mere assertion that did not make out a prima facie case and denied the complaint. He said:

“However, Complainant does not provide evidence of Respondent’s use of the disputed domain name and does not describe Respondent’s use of the domain name in its Complaint. Based upon the evidence put forward in the Complaint, there is no way for the Panel to determine whether Respondent’s use of the domain name capitalises on the reputation associated with Complainant’s ST. JOHN mark. The Panel has no basis to conclude that Respondent does not use the disputed domain name to make a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use of the domain name under Policy ¶4(c)(iii). The Panel finds that Complainant’s lack of evidence and arguments relating to Respondent’s use of the disputed domain name are sufficient grounds for the Panel to find that Complainant has not submitted a prima facie case in support of its allegations. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent’s default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).

Notice that the panelist relied on the lack of both “evidence and arguments”. So it wise to remember that panelists expect to see the evidence and some exposition of why the evidence being put forward proves the point in contention.

As we have said many times, make sure there is evidence in your complaint: it is required by the terms of the Policy, it is needed to prove your case and it is common sense to include it.


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