We have frequently spoken about the need to have evidence in domain name cases. In other words, there is no use just making assertions in your Complaint or Response and hoping you will be believed. You need evidence, for two reasons. First, the UDRP says so and, secondly, you will not be believed if you just make assertions. A disturbing trend in UDRP cases is that both Complaints and Responses, in some but not all cases, consist of a series of quotes from decided cases as if the quotes themselves were evidence. They are not. Some practitioners may be thinking that the case may or will be undefended, so the Complaint will not be subjected to too much scrutiny and the shortcomings in the evidence may therefore be overlooked. That is possible, but it is not good practice and it is very dangerous, because the case might suddenly become defended and contested aspects of the evidence will then become extremely important.
Having established that evidence is important and having repeated that point many times, we are going to proceed on the assumption that you understand and accept that evidence is important.
The next step is to remember why you are using evidence. It is not there in a vacuum. It is there to prove important parts of your case and to disprove your opponent’s case. So, keep in mind all the time the questions: why am I using this evidence? What am I trying to prove or disprove?
Quality evidence is a vital part of any UDRP claim
I will illustrate this process by looking at a recent case in which I was the panelist.
The case is CFA Institute v. Satish Singh
It is a FORUM decision which was delivered on May 12, 2020.
Claim Number: FA2004001892176.
The CFA was an institute that was a professional body that provided training, accreditation and services for its members who were Chartered Financial Analysts. It had several international trademarks for CFA, CFA INSTITUTE, and CHARTERED FINANCIAL ANALYSTS. The Respondent held the registration of a domain name he had registered to use in his business. It was <cfaacd.com>, which the Respondent said stood for “Courses For All Academy of Career Development”. In other words, he maintained that the domain name was invoking an academy called the “Courses For All Academy of Career Development” which existed, that the domain name was an acronym for that body and that there was nothing wrong in using the domain name for a website that told us all about the training and coaching courses that it was offering. The Complainant said that there was a lot wrong with it because CFA was the Complainant’s trademark, it was well known as such and that the domain name was invoking the Chartered Financial Analysists with what looked like an abbreviation for “academy of career development”. So, according to the Complainant, the Respondent was invoking the Complainant in its domain name and was using it and its website to promote its own business of training and coaching while trading on the Complainant’s name.
Looking at it objectively, you might be able to say that both sides had a reasonable or plausible argument, although it seemed to me odd that, if you wanted to have an academy, you would call it the “Courses For All Academy of Career Development” , as the last three words seem unnaturally added on to the more likely name of the body, i.e. the Courses for All Academy. If that were so, and the name was contrived, the CFA might have been meant to stand for something else, like “chartered financial analysts”, which would suggest that the Respondent really was trying to target the Complainant.
So, the evidence had to be used to show which of these two interpretations was the more likely and the more probable. The detail of the evidence was therefore important. What was its supposed to be proving? What parts of the evidence should each side emphasize? If it showed that the Respondent was trying to copy the CFA, or chartered financial analysts, it might suggest that it was targeting the Complainant and trying to trade on its name. If the evidence shows that there really was a body with the name invoked by the Respondent, it would seem that he was genuine, despite the odd name of his academy and that he did not have the Complainant in mind and was not targeting it.
The evidence first came to be useful for the Complainant in the identical or confusingly similar issue. The first and most dominant portion of the domain name was CFA, and some internet users would see this as significant; it suggested the domain name was a CFA domain name because the letters “CFA” came first and some internet users would therefore see the domain name as dealing with some activity associated with the Complainant and its trademark. So, on the first issue, you could argue that the evidence favored the Complainant.
The evidence came into its own when considering the second element, rights and legitimate interests. The Complainant clearly had a prima facie case. But had the Respondent rebutted it? Here, again, the odd structure of the name from which the acronym was said to have been taken did not help the Respondent, as it suggested the name was contrived and that, therefore, the alleged name was not legitimate. This led to a closer scrutiny of the evidence which showed that there never was a body or institution called Courses For All Academy of Career Development. On the Wayback Machine, screen shots did not carry the alleged name of the academy, but rather “C-F-A Academy of Career Development”, suggesting that the Respondent was targeting the “CFA”, the Complainant. Why, indeed, was the “cfa” in the domain name at all, if not to trade on the CFA mark? The website had other references to “CFA Academy of Career Development”. The Respondent’s email address on the website was “email : firstname.lastname@example.org” . Its copyright statement was “Copyright© 2010 C-F-A- courses for all.” At various times , screenshots showed that the business was C-F-A Academy of Career Development, and “CFA Academy of Career Development ( a Division of Pushti Infotech Pvt Ltd)”, and not “Courses For All Academy of Career Development.” Its reply to a letter of demand from the Complainant purports to come from “CFA for All Academy of Career Development”. Respondent’s explanation for the construction of the domain name was therefore untrue and the Panel did not accept it. The evidence, when looked at closely and used for the purpose and in the manner referred to above, swung the outcome. It showed that the Respondent had put repeated reliance on the CFA, the Complainant’s trademark, and used it to advance his own interests. That showed that the Respondent did not have right or legitimate interest in the domain name.
The evidence was also used to the same effect when it came to bad faith. The Respondent was in effect using the Complainant’s trademark to offer his similar training and coaching services. It was also pretty clear that he had actual knowledge of the Complainant’s trademark which is of course good evidence of bad faith registration.
So at each turn the evidence was important. It led in turn directly to the heart of the most important issues and questions in the case and helped the panelist decide which side was, in all probability, in the right.