In other words, the burden of proof is always on the complainant (trademark owner) who filed the case. And, if the complainant fails to meet its burden, then the panel will issue a decision in favor of the respondent (domain name registrant) — even if the respondent didn’t bother to submit a response.
It’s an embarrassing but not uncommon occurrence.
Because a complainant has to succeed on all three elements of the UDRP to obtain a favorable decision, a shortcoming on any one of them will result in a ruling for the respondent even if the respondent didn’t participate in the proceeding. As one panel succinctly wrote: “The onus of proving these elements remains on the Complainants even though the Respondents have not filed a Response.”
Failure to Establish Trademark Rights
So, for example, in Mascot Media Circle, LLC dba OnlineMBA v. WhoIsGuard, Inc. / Ahmed Guettouche, WIPO Case No. D2015-1209, the complainant failed to establish that it had trademark rights (a requirement of the UDRP’s first element) in ONLINEMBA in a dispute over the domain name <onlinemba.com>.
Although the mark was not registered, it is widely accepted that common-law rights are sufficient — if the complainant submits proper evidence. In the <onlinemba.com> case, the complainant failed to convince the panel of its common-law trademark rights. The panel wrote (emphasis added):
[A]lthough evidence has been provided to show that the Complainant’s Website has been in use for five years, and has been cited in various articles, no evidence has been provided that would demonstrate by a preponderance of the evidence, that, by virtue of such use, the public has come to perceive ONLINEMBA as a badge of origin, rather than as a generic or mere descriptive reference to a service that provides information about MBA courses that are offered online.
As a result, the absence of any arguments from the respondent was irrelevant, and the panel refused to transfer the domain name.
Failure to Prove a Lack of Rights or Legitimate Interests
In another case, Ironfx Global Limited v. MR Qaisar Saeed Butt / Moniker Privacy Services, WIPO Case No. D2015-1221, a complainant failed to succeed on the UDRP’s second element (that the respondent lacks rights or legitimate interests in the domain name) even without any arguments from the respondent. The case involved the domain name <ironfxscam.com>, which was used in connection with “a criticism website… in which the Respondent complained about his inability to access funds held with the Complainant and stated that the purpose of the site was to share his experience with other clients of the Complainant.”
Although the respondent in the <ironfxscam.com> sent two e-mails to WIPO, the panel refused to consider them. And, the respondent did not submit a formal response.
Despite the respondent’s lack of substantive participation in the UDRP proceeding, the panel found that the domain name was legitimately being used in connection with a criticism site because, among other things, it contained the word “scam” and because “[t]here is no evidence that the website reflects anything other than the Respondent’s genuine views, albeit views which are objectionable to the Complainant.”
As a result, despite the absence a response from the domain name registrant, the panel issued a decision in favor of the respondent.
Failure to Prove Bad Faith
The third UDRP element — that the respondent registered and is using the disputed domain name in bad faith — is typically the most difficult to prove. So, if a complainant fails to meet its burden here, even if the respondent says nothing, then the complaint will fail.
That’s exactly what happened in, to cite just one case, Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171, where the panel observed that “[a] respondent’s failure to file a response does not automatically result in a decision in favor of the complainant.”
There, the website associated with the disputed domain name was inactive, which is not necessarily fatal to the complainant. But, the panel wrote (emphasis added), “the Complainant’s brief arguments do not support an inference that the Respondent must have registered the Disputed Domain Name in an effort to exploit the Trade Mark or are otherwise indicative of bad faith.”
After discussing some confusion around the date of the complainant’s trademark rights relative to the date of the domain name registration, the panel added (emphasis added):
[T]here is a question whether it is appropriate to hold the present lack of clarity against the Complainant, where the Respondent was in a clear position to shed light on this issue by providing a Response indicating and documenting the date on which it acquired the Disputed Domain Name. However, in the specific circumstances of this case, the Panel on balance declines to draw an adverse inference in this regard from the Respondent’s default. On the whole, noting the Complainant’s overall responsibility to properly present its case, the Panel finds this Complaint too scant to tip the scales in the Complainant’s favor on this point.
Failure to Address the Panel’s Questions
Adding insult to injury, one recent UDRP decision indicated that the panel gave the complainant an additional opportunity to avoid a loss despite the absence of a response — but the complainant failed to take advantage of it. The case, TripAdvisor, LLC / Smarter Travel Media LLC v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT, NAF Claim No. 1623462, involved two domain names, <tripadvosor.com> and <trpadvisor.com>, and resulted in an unusual split decision.
The complainant in the TripAdvisor case was represented by CitizenHawk, Inc., a company that has been criticized by previous UDRP panels, including one who said that its complaint was “poorly drafted and difficult to read.” In TripAdvisor, the respondent was not the only party who failed to fully participate in the proceeding: Not only did the respondent not submit a response, but the complainant “declined to respond to [two] interlocutory orders [from the panel], first, by providing a non-responsive submission, and next, by providing no response at all to the second interlocutory order.”
As a result, the panel denied the complainant’s request to transfer the domain name <tripadvosor.com> despite the absence of a response from the domain name registrant (a result that perhaps could have been avoided if the complainant had fully participated in the proceeding itself).
The WIPO Overview, paragraph 4.7, makes clear that the burden of proof in a UDRP proceeding is “‘on balance’ — often expressed as the ‘balance of probabilities’ or ‘preponderance of the evidence’ standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true.”
This burden of proof means that, in the absence of a response, a complainant’s “[c]onclusory statements unsupported by evidence” are insufficient and will, as the cases discussed above make clear, result in a decision allowing the registrant in a UDRP case to keep the disputed domain name(s).
To avoid this embarrassing situation — that is, losing a UDRP case even where the respondent doesn’t bother to show up and defend itself — a complainant should remember that a UDRP complaint is more like a motion for summary judgment in U.S. courts, which requires detailed factual and legal arguments supported by appropriate evidence, rather than a mere complaint. The UDRP complaint may be the only document a trademark owner files in a domain name dispute proceeding, so it is important not to assume anything or fail to make any appropriate arguments. And, of course, if a panel gives a complainant an opportunity to elaborate or answer an important question, failing to do so could be fatal.