UDRP Basics – What Do You Need to Prove?

By Steve Levy

Do you really know the nuts and bolts of what goes into a successful UDRP case? Let’s start with the basics. There’s the Policy itself, the UDRP Rules, and then each dispute provider has its own Supplemental Rules.

In order to win, the party filing the case (the “Complainant”) needs to prove the following:

  1. It owns trademark rights and that the disputed domain name is confusingly similar to that trademark;
  2. The domain name owner has no rights or legitimate interests in the domain name; and
  3. The domain name was registered and is being used in bad faith.

Each of these three elements has its own special requirements and issues, which are discussed below. But for starters just know that, although the UDRP is not as complicated or expensive as courtroom litigation, it’s still a very nuanced and complicated process that’s underestimated by even some highly respected trademark litigation law firms.

(i) – Trademark Rights and Confusing Similarity

In the documents filed to start the UDRP process (the “Complaint” + supporting evidence) the Complainant needs to:

  1. Explain how it owns relevant trademark rights, and
  2. Argue why it believes that the disputed domain name is confusingly similar to that mark.

For the first of these items, proof is critical. A Complainant can’t simply make a written statement in the Complaint that it owns trademark rights. It must also submit evidence as an annex to the Complaint. In many cases, this consists of copies of a few of the Complainant’s trademark registration certificates issued, in any country, by a government trademark office. However, if the trademark is not registered, it’s still possible for the Complainant to prove that it has rights if it submits examples of how its mark is distinctive and has developed a brand reputation and that it identifies the Complainant as the source of products or services.

As for arguing that the disputed domain name is confusingly similar to the Complainant’s trademark, this is usually as easy as pointing out how the mark is contained within the domain. Even if there’s a small difference in spelling (called “typosquatting”) or the domain adds other words to the mark such as “parts”, “sale”, or “newyork”, if the mark is identifiable within the domain, this requirement will most often be met. There are very few UDRP cases which are denied based on this issue.

(ii) – Rights or Legitimate Interests

Continuing on with the three things that a Complainant needs to prove in order to succeed in its UDRP case against an infringing domain name, the second is that the Respondent has no “rights or legitimate interests” in the domain. Since it’s difficult to prove a negative, the Complainant only needs to submit some evidence and argument regarding this element and then the burden shifts to the Respondent to submit a defense as why it has rights or legitimate interests.

The UDRP provides three examples of ways that rights or legitimate interests can be shown. These are where the Respondent:

  1. Is making a “bona fide” offering of goods or services, for example, operating a legitimate business that doesn’t compete with the Complainant (think of the trademark DELTA for an airline, faucets, power tools, etc. and the mark DOVE for soap, ice cream, etc.);
  2. Is commonly known by the domain name, for example, the Respondent’s family name or the name of its legitimate, non-competing business; or
  3. Is making a legitimate non-commercial or fair use of the domain, for example, has set up a fan or criticism site, an informational blog, etc.

This section of the UDRP gives the domain owner an opportunity to show that it’s using the disputed domain in a way that doesn’t infringe on the Complainant’s trademark rights. However, it can’t just make these claims in its response, it also needs to submit evidence to back up its claims. This might include screenshots of its legitimate e-commerce or fan website, a copy of its business registration certificate, or a copy of its driver’s license or passport to prove its personal name (but with sensitive information like the ID number blacked-out for privacy).

(iii) – Bad Faith Registration and Use

The last of the three things that a Complainant needs to prove is bad faith registration and use. The word “and” is very important here since it means that bad faith must be proven both at the time the domain was acquired by the current owner (through registration or transfer), and in its current use. Too many brand owners get this wrong and file claims against domain names that were acquired on a date prior to their first trademark rights. This is a sure way to lose a UDRP case!

Paragraph 4(b) of the UDRP gives four examples of how bad faith can be proven. These are not exclusive but most cases do fit into one of the categories:

  1. Offer to sell the domain to the trademark owner for a profit;
  2. A pattern of conduct preventing trademark owners from using their mark in domains;
  3. Intent to disrupt the business of a competitor and divert customers; or
  4. Seeking commercial gain from confusion with a trademark.

Although all of these examples have appeared in many UDRP cases over the years, the fourth one is the most common scenario since it’s very similar to traditional trademark infringement which is also based on customer confusion.

It’s also important to know that all of the UDRP par. 4(a) requirements must be proven by a “preponderance of the evidence” which means that the panelist (arbitrator) must be convinced that it’s more likely than not (51% likely) that each requirement is met.

If your brand is facing domain name infringement and would like to discuss the UDRP process, the FairWinds Partners team is available for consultation upon request. Contact us here.

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