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Domain name disputes: evidence is everything
A recent decision under the .au Dispute Resolution Policy (auDRP) serves as a timely reminder that even though they are ‘administrative proceedings’, domain name disputes are won and lost on evidence.
In Mark Kingsley Williams v BBhinds Pty Ltd (WIPO Case No DAU2013-0010), the Complainant, a UK trade mark attorney, alleged that the Respondent, an Australian company, had registered a domain name that was identical to the Complainant’s trade mark in bad faith.
This was rejected by the Respondent who asserted that it had never heard of the Complainant, provided evidence of its own good faith preparations to use the domain name in connection with its long-established business and attacked the Complainant’s lack of evidence.
Under the auDRP, a Complainant must prove three things:
- that it has a right or legitimate interest in a trade mark that is identical or confusingly similar to the disputed domain name,
- that the Respondent does not have a right or legitimate interest in the disputed domain name, and
- that the Respondent registered or is using the domain name in bad faith.
All three elements must be proven in order for a Complainant to be successful.
In the present case, the Panel found that the Complainant failed to prove any of the grounds (reported by leading domain name news site, Domain Name Wire, as a ‘rare trifecta loss’) largely due to inadequate evidence.
Interestingly, in addressing the first element under the auDRP, the Complainant asserted that it had an Australian trade mark registration but failed to provide evidence of the registration. As the Complainant bore the burden of proof, the Panel held that because of the lack of sufficient evidence, it failed to establish the first element required under the auDRP.
The Complainant also failed to establish the second element required to be proven, again because of a lack of evidence.
On the third element (the crucial ‘bad faith’ element), the little evidence the Complainant filed actually worked to its detriment. In emails annexed as evidence, the Complainant asserted a trade mark registration date that was later than the date the disputed domain name was registered. Accordingly, it was impossible, on the Complainant’s own evidence, for the domain name to have been registered by the Respondent in bad faith.
- Disputes (whether in Court or before administrative panels) are won and lost on evidence. A case is only as strong as the evidence that is available to support it.
- Domain name disputes are not trade mark disputes. UDRP and auDRP proceedings are a very specific type of dispute and it pays to get representation from someone with specific expertise (the unsuccessful Complainant in this case was himself a trade mark attorney).
Markwell acted for the successful Respondent in this auDRP proceeding.
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