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The UDRP summarized
(or, All the things that the Complainant has to
prove):
There are three elements, or prongs, to a UDRP case.
They can be summarized as, "Confusion," "Rights," and "Bad
Faith."
- 1. Confusion:
- UDRP wording, "The domain name registered
by the Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights."
The intent of this prong is that the Complainant has to prove there is actual or
plausible confusion by the target audience or customers of the parties involved.
For example, confusion would be strongly demonstrated by someone typing in the disputed
domain name in their web browser expecting to find the Complainant's site.
There are no tests or guidelines stated within the UDRP for determining confusion
or similarity. There are any number of tests, precedents and guidelines within other
forums [i]. However, the Administrative Panel do not feel that they
are in any way bound by these precedence or guidelines [ii]. Any tests
for proof of this prong are within the prong's wording:
- The domain name is identical to, or similar
to and confused by target customers of both parties with, the Complainant's
mark; and
- The Complainant has sufficient rights to that mark
as it pertains to this proceeding
- Defense
- 2. Rights:
- UDRP wording: "The Respondent has no rights
or legitimate interests in respect of the domain name."
The intent of this prong is that the Complainant must prove the Respondent does not
have any valid, legitimate use for the domain name.
The UDRP suggests the following tests:
- Before any notice to the Respondent of the dispute,
the Respondent has not used, or shown demonstrable preparations to use, the domain
name in connection with a bona fide offering of goods or services; or
- The Respondent has not been commonly known by the
domain name; or
- The Respondent is not making a legitimate noncommercial
or fair use of the domain name, and intends commercial gain by misleadingly diverting
consumers or tarnishing the mark at issue.
- Defense
- 3. Bad Faith:
- UDRP wording: "The domain name has been
registered and is being used in bad faith."
The intent of this prong is that the Complainant must show that the Respondent has
registered or used the domain name to harm or disrupt the Complainant.
The UDRP suggests the following tests:
- Circumstances indicating that the Respondent has
registered or 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
- The Respondent has 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 the Respondent has engaged in a pattern
of such conduct; or
- The Respondent has registered the domain name primarily
for the purpose of disrupting the business of a competitor; or
- By using the domain name, the Respondent has intentionally
attempted to attract, for commercial gain, Internet users to the Respondent's 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 the Respondent's
web site or location or of a product or service on your web site or location.
Defense
Footnotes:
[i] AMF Inc. v. Sleekcraft Boats,
599 F.2d 341, 348-49 (9th Cir. 1979)
[ii] "The Respondent is under
the mistaken impression that this Panel is bound by US trademark law when determining
the issue of confusing similarity. Such is not the case. ... Panels have consistently
held that strict application of the confusion criteria arising out of national trademark
laws is not appropriate, and that a broader notion of confusion should be used in
these proceedings."
Broadcom Corporation v. Michael Becker, FA 98819 (Nat Arb. Forum October 22, 2001)
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