Brennercom UDRP Panel Fails to Consider the Third Limb of the Policy

The UDRP Policy is made up of three limbs; namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.

Although ultimately the Complainant has the burden of proving all three, only two of the limbs are in the power of the Complainant to produce evidence sufficient for overcoming the burden.

In relation to the first, the Complainant is able to demonstrate its rights by means of a trademark certificate, the fact of whether the domain is identical or similar does not require him to reproduce evidence of any kind, but can be adjudged on the mere inspection of the domain in comparison to the mark in question. The Respondent has little room to contest the validity of a trademark, arguments related to the rightfulness of Complainant’s trademark registration or the date in which it was registered carries very little weight under this limb of the Policy.

The third limb also places the burden on Complainant to demonstrate to the Panel that the registration and use of the domain was in bad faith. Evidence can take the form of offers for sale directed to the public or the Complainant, evidence of the Respondent being engaged in a pattern of abusive registrations, evidence of disruption to the Complainant’s services or an attempt on the part of the Respondent to endorse its own website through the use of the Complainant’s mark – this all requires work on the part of the Complainant, to produce evidence sufficient to overcome the burden.

The second however proves more difficult, it requires the Complainant to know the Respondent’s mind (“intent”) his past (“commonly known”) and future (“demonstrable preparations”), therefore the Complainant is only required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once that has been accomplished the burden shifts to the Respondent, if the Respondent is successful in producing evidence of relevant rights or legitimate interest the Complainant loses. The Burden always remains with the Complainant, meaning a Panel may not even have to consider whether or not the disputed domain name was registered and is being used in bad faith.

Firstly, it is important to note that cases can be lost even before the Complainant’s allegations of bad faith are even heard. Secondly, the general standard of proof under the UDRP is “on the balance of probabilities” or “preponderance of evidence”. Under this standard, an asserting party would need to establish that it is more likely than not that the claimed fact is true. In order to understand this concept, legal experts have used a mathematical analogy to explain it:

“The law operates a binary system in which the only values are 0 and 1. The fact either happened or it did not. If the tribunal is left in doubt, the doubt is resolved by a rule that one party or the other carries the burden of proof. If the party who bears the burden of proof fails to discharge it, a value of 0 is returned and the fact is treated as not having happened. If he does discharge it, a value of 1 is returned and the fact is treated as having happened.”

In the present case the Panel held that the Complainant failed in this regard:

“In this case the Complainant’s business and trade mark rights cannot act to prevent the Respondent from carrying on a legitimate business simultaneously in another country, particularly since: (i) the Complainant’s activities appear to be largely isolated to Italy; (ii) the Respondent is based in the USA and appears to have been operating its business in the USA, the UK and Germany; (iii) there is no substantive evidence that the Respondent is targeting the Complainant or seeking to trade off the Complainant’s reputation through use of the Disputed Domain Name; and (iv) the Respondent has registered trade mark rights in the BRENNERCOM mark in the UK, which predates the Complainant’s first registration of the BRENNERCOM mark in Italy.”

This case helps us to see the importance of Respondents coming forward to answer allegations against them with a plausible explanation for registering the disputed domains but also Complainant’s need be concerned regarding the evidentiary weight each individual Panel gives to the allegations they have raised in their complaint.

Although it is important to understand the limited nature of the UDRP, unsupported assertions or unsubstantial evidence  will not be enough for the Complainant to overcome its burden.


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