question Important Questions about UDRP (UDRP experts needed)

[AH555]

Hello everyone,

I have a few important questions about the UDRP procedure that I hope someone can answer.
I have been reading much about UDRP lately and how the process works. I highly appreciate your time.

Q1:
Let's assume the complainant begins the process and submits his case through WIPO. What would happen if the respondent doesn't respond at all to the case and throughout the given timeframe? I read on ICANN/WIPO's website that the respondent would be considered "default". But what exactly does this mean. More importantly, would this heavily shift the outcome of the case in favor of the complainant? Would the complainant win, as no defense was presented in the case?

Q2:
I know that a trademark must be registered BEFORE the domain for the complainant to have a valid case.
But let's assume that a domain has been sitting under pending WHOIS verification (suspended) for the last 5-6 years (pretty much abandoned), and the WHOIS information on the domain is fake, no name & fake address with a fake email (for example [email protected]).

Now, with that in mind, let's assume a company has recently begun its operations and has trademarked that EXACT domain name recently (AFTER the domain was registered) (it's not a common phrase or a word at all, it's like "hzgutool" as an example). Would they be able to successfully claim it through a UDRP case with the following arguments/points in their case:

- If the complainant can show the trademark is currently in use (for example on a product they are selling/up for sale), would that give them a higher right over the domain than the respondent who has abandoned it (suspended, pending WHOIS)?

- The domain is not in use (suspended pending whois verif), and the respondent doesn't respond to the UDRP.

Q3:
Lastly, I've read somewhere that it is up to the respondent to show/prove that the domain was registered before the trademark and they can easily do so and win the case if they merely respond. However, if the respondent doesn't respond at all then the complainant automatically wins the UDRP.

- Is this true?


Again I highly appreciate your time and thanks for reading my post.

 

[tonyk2000]

Some if not all questions:
https://www.wipo.int/amc/en/domains/search/overview3.0/

 

[AH555]

Some if not all questions:
https://www.wipo.int/amc/en/domains/search/overview3.0/

thank you

 

[jberryhill]

As noted above, the bulk of common questions are answered by the WIPO Overview. I will point out the section numbers where your exact issues are addressed:

However, if the respondent doesn't respond at all then the complainant automatically wins the UDRP.

No. This is answered in the WIPO Overview section 4.3, "Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?"

There are a lot of cases in which the respondent did not respond, and the complainant did not win.

The Complaint will still be reviewed by the panel to determine whether it establishes the three elements required for transfer of the domain name.

I know that a trademark must be registered BEFORE the domain for the complainant to have a valid case.
But let's assume...

No. A registered trademark is not required.

That part of your question is addressed the WIPO Overview section 1.1.1, "The term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks."

Concerning anything you said following "let's assume" the answer is "it doesn't matter". That part of your question is addressed in WIPO Overview section 3.8, and is the most commonly asked question and misunderstood answer on Namepros, "Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?"

The complainant (or its predecessor in interest) must, at a minimum, possess a trademark before the respondent (and not some prior registrant) acquired the domain name. The complainant does not need to have a registration for that trademark.

If you do not understand the difference between "having a trademark" and "registering a trademark", please review this thread:

https://www.namepros.com/threads/domain-ownership-then-someone-else-trademarked.1308677/

The Complainant is required to show that the respondent acquired the domain name in bad faith relative to the complainant's mark. That is obviously not going to be possible in circumstances where the respondent acquired the domain name prior to existence of the trademark.

 

[AH555]

As noted above, the bulk of common questions are answered by the WIPO Overview. I will point out the section numbers where your exact issues are addressed:



No. This is answered in the WIPO Overview section 4.3, "Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?"

There are a lot of cases in which the respondent did not respond, and the complainant did not win.

The Complaint will still be reviewed by the panel to determine whether it establishes the three elements required for transfer of the domain name.



No. A registered trademark is not required.

That part of your question is addressed the WIPO Overview section 1.1.1, "The term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks."

Concerning anything you said following "let's assume" the answer is "it doesn't matter". That part of your question is addressed in WIPO Overview section 3.8, and is the most commonly asked question and misunderstood answer on Namepros, "Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?"

The complainant (or its predecessor in interest) must, at a minimum, possess a trademark before the respondent (and not some prior registrant) acquired the domain name. The complainant does not need to have a registration for that trademark.

If you do not understand the difference between "having a trademark" and "registering a trademark", please review this thread:

https://www.namepros.com/threads/domain-ownership-then-someone-else-trademarked.1308677/

The Complainant is required to show that the respondent acquired the domain name in bad faith relative to the complainant's mark. That is obviously not going to be possible in circumstances where the respondent acquired the domain name prior to existence of the trademark.

Hi jberry,

Thank you so much for going over my questions, I was wondering:

In section 3.3. Can the “passive holding” or non-use of a domain name support a finding of bad faith?

"While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put."

(I) The trademark is very distinct and unique
(ii) The respondant will fail to respond
(iii) The respondent is using false identity and contact details and IS in breach of its registration agreement (which is why the domain was suspended in the first place, pending whois verification).
(iv) it cannot be put forth.

These points all apply, so why wouldn't this be enough to be deemed "bad faith"?

 

[jberryhill]

These points all apply, so why wouldn't this be enough to be deemed "bad faith"?

The third requirement of the UDRP is that the domain name be shown to have been "registered and used in bad faith".

When there is an "and" in a rule, you need both of the things which the word "and" joins.

That element requires two things: (a) registration in bad faith and (b) use in bad faith.

What that section is driving at is the question of "If the domain name is not being used then under what circumstances would that non-use constitute "use in bad faith".

Notice the question: Can the “passive holding” or non-use of a domain name support a finding of bad faith?

This is not about proving the entire third elements. This is a specific question about whether "non-use" of a domain name could constitute bad faith use - one of the TWO things rolled into the third element.

Maybe an example might help. Next week, there is going to be a horse race. In order to enter the race, the rules say, "You must have a horse and a jockey." The rules also say, "In order to qualify for entry, your jockey must be wearing a pair of boots."

You show up at the track with no horse, and a jockey with a pair of boots, pointing to that part of the rules that says "In order to qualify for entry, the jockey must have a pair of boots" and saying, "Look, see, my jockey has a pair of boots."

That's great, but you still don't have a horse, which was the other thing you needed to have.

So, yes, you have pointed to a section of the Overview which addresses a common "used in bad faith" scenario in which the factors listed can be argued to show the domain name has been "used in bad faith" under the passive holding doctrine. That has absolutely nothing to do with the OTHER thing you must show, which is that the domain name was registered in bad faith.

The most common reason for a finding of abuse of the UDRP is failure to show that the trademark pre-dated the respondent's acquisition of the domain name.

These are some of the UDRP cases I have defended to an RDNH decision thus far this year:

Domain	Case	Date	Decision
healthyr.com	WIPO D2023-1802	2023-06-26	Complaint denied
vbg.com	NAF 2046327	2023-06-22	Claim Denied
websec.com	WIPO D2023-0813	2023-05-01	Complaint denied
gotohale.com	WIPO D2023-0084	2023-04-20	Complaint denied
mundonatural.com	WIPO D2022-4958	2023-04-14	Complaint denied

Scroll to the RDNH section of each one:

Healthyr.com:

"Based on the record evidence, Complainant was well aware of Respondent’s ownership of and use of the
Disputed Domain Name on the same date it first used the HEALTHYR mark in United States commerce, and
before Complainant filed its trademark application for the same."

VBG.com:

"Such an analysis is well established by many UDRP decisions to the effect that if a Respondent’s registration of the <vbg.com> domain name predates Complainant’s first claimed rights in the VBG mark, a Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use."

Websec.com:

"i) the Complainant, which is represented by a lawyer, should have appreciated the weakness of its case in
view of the fact that the disputed domain name was registered well before the Complainant acquired
trademark rights on WEBSEC."

Gotohale.com:

"Finally, as noted above, Respondent produced evidence to show the registration of the Disputed Domain
Name 21 years before Complainant registered its Mark and 18 years before Complainant existed as a law
firm."

Mundonatural.com:

"The Panel finds that this situation is one in which a finding of RDNH is appropriate. As already noted in the
discussion above about the supplemental filings, the Complainant is represented by counsel who should be
familiar with the relevant aspects of UDRP practice. More specifically, in this case, there was essentially no
evidence in support of the necessary facts, most notably facts relating to trademark rights arising
pre-trademark registration. Similarly, the Complainant did not address how the disputed domain name was
initially registered prior to any proven trademark rights."

Let's make this simple, though. If someone started using a trademark in 2023 knowing full well that the corresponding domain name has been registered since 2020, then whose fault is it that the trademark owner does not have the domain name they want?

When you start a business and choose your marks, you can choose anything you want. That is a good time to check whether your choices line up with domain names which are available to you. Otherwise you need to (a) pick a different trademark to use BEFORE investing time and money into it, or (b) buy the domain name you want.

But going around and accusing others of wrongdoing because you made a stupid decision is no way to go through life. I teach that lesson to trademark owners and their attorneys several times a year and more than five times so far this year (since more frequently, the attorneys on the other side have started to recognize a losing case when they see one and tell their client to fish or cut bait).

 

[AH555]

The third requirement of the UDRP is that the domain name be shown to have been "registered and used in bad faith".

When there is an "and" in a rule, you need both of the things which the word "and" joins.

That element requires two things: (a) registration in bad faith and (b) use in bad faith.

What that section is driving at is the question of "If the domain name is not being used then under what circumstances would that non-use constitute "use in bad faith".

Notice the question: Can the “passive holding” or non-use of a domain name support a finding of bad faith?

This is not about proving the entire third elements. This is a specific question about whether "non-use" of a domain name could constitute bad faith use - one of the TWO things rolled into the third element.

Maybe an example might help. Next week, there is going to be a horse race. In order to enter the race, the rules say, "You must have a horse and a jockey." The rules also say, "In order to qualify for entry, your jockey must be wearing a pair of boots."

You show up at the track with no horse, and a jockey with a pair of boots, pointing to that part of the rules that says "In order to qualify for entry, the jockey must have a pair of boots" and saying, "Look, see, my jockey has a pair of boots."

That's great, but you still don't have a horse, which was the other thing you needed to have.

So, yes, you have pointed to a section of the Overview which addresses a common "used in bad faith" scenario in which the factors listed can be argued to show the domain name has been "used in bad faith" under the passive holding doctrine. That has absolutely nothing to do with the OTHER thing you must show, which is that the domain name was registered in bad faith.

The most common reason for a finding of abuse of the UDRP is failure to show that the trademark pre-dated the respondent's acquisition of the domain name.

These are some of the UDRP cases I have defended to an RDNH decision thus far this year:

Domain	Case	Date	Decision
healthyr.com	WIPO D2023-1802	2023-06-26	Complaint denied
vbg.com	NAF 2046327	2023-06-22	Claim Denied
websec.com	WIPO D2023-0813	2023-05-01	Complaint denied
gotohale.com	WIPO D2023-0084	2023-04-20	Complaint denied
mundonatural.com	WIPO D2022-4958	2023-04-14	Complaint denied

Scroll to the RDNH section of each one:

Healthyr.com:

"Based on the record evidence, Complainant was well aware of Respondent’s ownership of and use of the
Disputed Domain Name on the same date it first used the HEALTHYR mark in United States commerce, and
before Complainant filed its trademark application for the same."

VBG.com:

"Such an analysis is well established by many UDRP decisions to the effect that if a Respondent’s registration of the <vbg.com> domain name predates Complainant’s first claimed rights in the VBG mark, a Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use."

Websec.com:

"i) the Complainant, which is represented by a lawyer, should have appreciated the weakness of its case in
view of the fact that the disputed domain name was registered well before the Complainant acquired
trademark rights on WEBSEC."

Gotohale.com:

"Finally, as noted above, Respondent produced evidence to show the registration of the Disputed Domain
Name 21 years before Complainant registered its Mark and 18 years before Complainant existed as a law
firm."

Mundonatural.com:

"The Panel finds that this situation is one in which a finding of RDNH is appropriate. As already noted in the
discussion above about the supplemental filings, the Complainant is represented by counsel who should be
familiar with the relevant aspects of UDRP practice. More specifically, in this case, there was essentially no
evidence in support of the necessary facts, most notably facts relating to trademark rights arising
pre-trademark registration. Similarly, the Complainant did not address how the disputed domain name was
initially registered prior to any proven trademark rights."

Let's make this simple, though. If someone started using a trademark in 2023 knowing full well that the corresponding domain name has been registered since 2020, then whose fault is it that the trademark owner does not have the domain name they want?

When you start a business and choose your marks, you can choose anything you want. That is a good time to check whether your choices line up with domain names which are available to you. Otherwise you need to (a) pick a different trademark to use BEFORE investing time and money into it, or (b) buy the domain name you want.

But going around and accusing others of wrongdoing because you made a stupid decision is no way to go through life. I teach that lesson to trademark owners and their attorneys several times a year and more than five times so far this year (since more frequently, the attorneys on the other side have started to recognize a losing case when they see one and tell their client to fish or cut bait).

Thanks for the in-depth response. I read through it. From what I have gathered. The complainant must be able to satisfy all 3 elements to win the UDRP and only having 1 or 2 of them isn’t enough.

 

[jberryhill]

The complainant must be able to satisfy all 3 elements to win the UDRP and only having 1 or 2 of them isn’t enough.

Bingo.

Two of "3 elements" - all joined with the word "and" - can be broken down a little further:

1. Identical or confusingly similar to a trade or service mark in which the Complainant has rights.

This is actually two things. First, the domain name must be "identical or confusingly similar to a trade or service mark". Second, it must be a trade or service mark in which "the Complainant has rights". Yep, once in a while you get a situation where the Complainant and the trademark owner aren't the same, which is a real head scratcher. Usually it is just sloppy work by someone who filed personally on behalf of their company, but it's not obvious at the receiving end how the entities are related.

3. Registered and Used in Bad Faith

As noted above, this means both "registered in bad faith" and "used in bad faith". Now, 99.99% of the time the point of "registered in bad faith" will be assumed on the basis of how the domain name is being used. But if it is not possible for the domain name to have been registered in bad faith - i.e. before the trademark existed - then you don't get to the second point.

The "bad faith" element has not always been interpreted this way. There was a short period a number of years ago, where various panelists urged that "use in bad faith" is sufficient for the third element. That interpretation got a pushback from other panelists. Then, along came a case in which the Complainant was represented by a leading UDRP panelist, the Respondent was represented by me, and we obtained a panel consisting of three of the top UDRP panelists.

Two of the panelists, the majority which decides the outcome, stated:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-2069

"In summary, this Panel sees no need to depart from the traditional view of paragraph 4(a)(iii), which has been adopted and approved by the majority of panelists in those decisions in which this question has arisen for consideration over more than 10 years - the Complainant must prove both bad faith registration and bad faith use.

Therefore, as the element requires bad faith use and registration, the Complainant cannot succeed in this third element of the Policy. The Respondent did not register the disputed domain name in bad faith and while it did use the disputed domain name in bad faith by operating a website containing pay-per-click links trading off the Complainant’s trademark value, the Panel finds this insufficient to enable the Complainant to succeed given the conjunctive requirement (for registration and use) under the Policy’s third element."

The remaining panelist, who was at the time one of the principal promoters of the "you only need one" interpretation, dissented, stating:

"The issue in dispute is very simple: it is whether the requirement of paragraph 4(a)(iii) that the domain name “has been registered and is being used in bad faith” must be interpreted as if it actually read “has been registered in bad faith and is being used in bad faith” (i.e., as if the italicized words had been added). I believe it should not be so interpreted. Rather, I believe that the correct interpretation is the one explained in the reasoning of the three-member panel in Jappy GmbH v. Satoshi Shimoshita,WIPO Case No. D2010-1001.
...
I agree with the majority that the Respondent has engaged in bad faith use of the disputed domain name. In particular, I believe that the Respondent has engaged in conduct of the type which paragraph 4(b)(iv) specifies for the purposes of paragraph 4(a)(iii) “shall be evidence of the registration and use of a domain name in bad faith”. For these reasons, I would find that the Complainant has made out the requirement of paragraph 4(a)(iii)."

Ultimately, the dissenting panelist's view was not the one which prevailed in the series of cases in which this issue was hashed out. The argument was that the UDRP does say this:

-----
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
--------

So, it starts by saying that any of those things "shall be evidence of the registration and use of a domain name in bad faith". Noticing that (iii) and (iv) solely deal with use of the domain name, then the argument is that if you have someone engaged in "(iv) by using the domain name..." it is solely sufficient to show "registration and use in bad faith".

I put the final nail in that coffin by pointing out to several of the panelists promoting that argument that they were missing the significance of the word "evidence" in that section of the UDRP. I believe I've mentioned on Namepros and elsewhere that a common mistake is confusing the concepts of "evidence" and "proof".

Here's the difference between evidence and proof:

A bank was robbed and the guard was shot to death a half hour ago. You were believed to be a suspect and the police come to your house to investigate. The following statement is true:

Any of the following circumstances is evidence you "robbed the bank and shot the guard":

(a) Your car engine is warm,

(b) You have stack of cash sitting on the table,

(c) You own a gun.

So, yes, any of those things is "evidence" that you robbed the bank and shot the guard. Evidence is a thing which, if shown, makes a proposition more or less likely. If your car engine is warm, then it makes the hypothesis you recently arrived from the bank more likely. If you have a stack of cash, then it makes the proposition that you got if from the bank more likely. If you own a gun, then it makes the proposition that you shot the guard more likely.

Do those three things prove you "robbed the bank and shot the guard"? No, they don't. A lot more would be needed to prove that.

But each of those three things would certainly be "evidence" that, in combination with other evidence, might get to proof. You might also have evidence you were somewhere else, etc.. That's what evidence is all about.

So, going back to the UDRP, the dissenting panelist is basing his argument on a statement that "these things shall be evidence of registration and use in bad faith" and changing it to say "these things shall be proof of registration and use in bad faith."

The title and the preamble of that section use the word "evidence" two times! When interpreting a document, it is usually a reliable first approach to assume that the words mean what they say and that they authors know what the words mean. This is particularly true when you have a bunch of lawyers using the word "evidence" since we would sure hope that most lawyers would know the difference between "evidence" and "proof" because it is one of the few things that really gets hammered in most legal education programs.

 

[BaileyUK]

Mr Berryhill, best teacher in the English speaking world on domain legalities. I'll never forget the hours and hours I poured over his early posts. fortunately I already had a good understanding and interest of Business and contract law so the logic (and case outcomes) fell easily into place for me.

It is a joy to see our mentor still at the top of his game

 

[AH555]

Bingo.

Two of "3 elements" - all joined with the word "and" - can be broken down a little further:

1. Identical or confusingly similar to a trade or service mark in which the Complainant has rights.

This is actually two things. First, the domain name must be "identical or confusingly similar to a trade or service mark". Second, it must be a trade or service mark in which "the Complainant has rights". Yep, once in a while you get a situation where the Complainant and the trademark owner aren't the same, which is a real head scratcher. Usually it is just sloppy work by someone who filed personally on behalf of their company, but it's not obvious at the receiving end how the entities are related.

3. Registered and Used in Bad Faith

As noted above, this means both "registered in bad faith" and "used in bad faith". Now, 99.99% of the time the point of "registered in bad faith" will be assumed on the basis of how the domain name is being used. But if it is not possible for the domain name to have been registered in bad faith - i.e. before the trademark existed - then you don't get to the second point.

The "bad faith" element has not always been interpreted this way. There was a short period a number of years ago, where various panelists urged that "use in bad faith" is sufficient for the third element. That interpretation got a pushback from other panelists. Then, along came a case in which the Complainant was represented by a leading UDRP panelist, the Respondent was represented by me, and we obtained a panel consisting of three of the top UDRP panelists.

Two of the panelists, the majority which decides the outcome, stated:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-2069

"In summary, this Panel sees no need to depart from the traditional view of paragraph 4(a)(iii), which has been adopted and approved by the majority of panelists in those decisions in which this question has arisen for consideration over more than 10 years - the Complainant must prove both bad faith registration and bad faith use.

Therefore, as the element requires bad faith use and registration, the Complainant cannot succeed in this third element of the Policy. The Respondent did not register the disputed domain name in bad faith and while it did use the disputed domain name in bad faith by operating a website containing pay-per-click links trading off the Complainant’s trademark value, the Panel finds this insufficient to enable the Complainant to succeed given the conjunctive requirement (for registration and use) under the Policy’s third element."

The remaining panelist, who was at the time one of the principal promoters of the "you only need one" interpretation, dissented, stating:

"The issue in dispute is very simple: it is whether the requirement of paragraph 4(a)(iii) that the domain name “has been registered and is being used in bad faith” must be interpreted as if it actually read “has been registered in bad faith and is being used in bad faith” (i.e., as if the italicized words had been added). I believe it should not be so interpreted. Rather, I believe that the correct interpretation is the one explained in the reasoning of the three-member panel in Jappy GmbH v. Satoshi Shimoshita,WIPO Case No. D2010-1001.
...
I agree with the majority that the Respondent has engaged in bad faith use of the disputed domain name. In particular, I believe that the Respondent has engaged in conduct of the type which paragraph 4(b)(iv) specifies for the purposes of paragraph 4(a)(iii) “shall be evidence of the registration and use of a domain name in bad faith”. For these reasons, I would find that the Complainant has made out the requirement of paragraph 4(a)(iii)."

Ultimately, the dissenting panelist's view was not the one which prevailed in the series of cases in which this issue was hashed out. The argument was that the UDRP does say this:

-----
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
--------

So, it starts by saying that any of those things "shall be evidence of the registration and use of a domain name in bad faith". Noticing that (iii) and (iv) solely deal with use of the domain name, then the argument is that if you have someone engaged in "(iv) by using the domain name..." it is solely sufficient to show "registration and use in bad faith".

I put the final nail in that coffin by pointing out to several of the panelists promoting that argument that they were missing the significance of the word "evidence" in that section of the UDRP. I believe I've mentioned on Namepros and elsewhere that a common mistake is confusing the concepts of "evidence" and "proof".

Here's the difference between evidence and proof:

A bank was robbed and the guard was shot to death a half hour ago. You were believed to be a suspect and the police come to your house to investigate. The following statement is true:

Any of the following circumstances is evidence you "robbed the bank and shot the guard":

(a) Your car engine is warm,

(b) You have stack of cash sitting on the table,

(c) You own a gun.

So, yes, any of those things is "evidence" that you robbed the bank and shot the guard. Evidence is a thing which, if shown, makes a proposition more or less likely. If your car engine is warm, then it makes the hypothesis you recently arrived from the bank more likely. If you have a stack of cash, then it makes the proposition that you got if from the bank more likely. If you own a gun, then it makes the proposition that you shot the guard more likely.

Do those three things prove you "robbed the bank and shot the guard"? No, they don't. A lot more would be needed to prove that.

But each of those three things would certainly be "evidence" that, in combination with other evidence, might get to proof. You might also have evidence you were somewhere else, etc.. That's what evidence is all about.

So, going back to the UDRP, the dissenting panelist is basing his argument on a statement that "these things shall be evidence of registration and use in bad faith" and changing it to say "these things shall be proof of registration and use in bad faith."

The title and the preamble of that section use the word "evidence" two times! When interpreting a document, it is usually a reliable first approach to assume that the words mean what they say and that they authors know what the words mean. This is particularly true when you have a bunch of lawyers using the word "evidence" since we would sure hope that most lawyers would know the difference between "evidence" and "proof" because it is one of the few things that really gets hammered in most legal education programs.

What a great read. You really are a master at your work John. Thanks for sharing your knowledge with us. Also, I fully understand and agree with your point on evidence and proof. In that case, the proof could as an example be CCTV footage of the robber in the bank and his face is visible and identifiable.

 

[marijuanadomain]

Udrp is the short cut dirty way to steal your domain