UDRP: “Registered and used in bad faith” must be proven with evidence by Complainants

Yet again a UDRP decision from WIPO demonstrates that the burden of proof for complainants requires detailed evidence to be submitted. In the decision over , an Indian travel agency website, the complainant had many facts in its favor:

  • it applied for registration of SHANTI (although curiously the WIPO panel stated the application was for SHANTI TRAVEL) in August 2009,
  • it claimed it had used the mark for travel arrangement services since at least 2005
  • it spent a “huge amount” of money on advertising
  • Respondent only began using the mark TRAVEL SHANTI since 2011:

shanti

Interestingly, despite these facts, the panel did not find that the complainants established that the respondents registered and used in bad faith, which may defined as any of the following:

  • respondent registered/acquired the domain in order to prevent the owner of a mark from reflecting their mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct
  • the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor
  • the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location

The panel also did not recognize the concept of constructive knowledge, in mentioning in its reasoning that the respondents stated they had no knowledge of the complainants trademark application, despite the fact that an active trademark application existed at the time the domain was purchased by respondents.

The takeaway here is that even where facts exist in the absolute sense, UDRP complainants must provide sufficient evidence to prove those facts. Since constructive knowledge may not be taken into account, complainants should try to find and submit evidence which demonstrate actual knowledge by the respondent of complainant’s mark prior to respondents registration of the contested domain name. Lastly, complainants should submit all evidence and law which lay out the legal rights of the respondent, whether that be the rights conferred to a trademark application/registration owner and/or common law rights. If the Panel clearly understands the legal rights owed to a complainant, it makes it easier for them to make a determination favorable to the complainant where the rights are otherwise unclear, keeping in mind that Panelists are not always familiar with the national law of the country of the complainant.

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