Domain Name Disputes can succeed or fail depending on your approach. Well known and distinguished domain name panellist, Neil Brown QC shares his tips on what to do, and what not to do –
Domain Name Disputes
1. Remember to use evidence.
Parties on both sides frequently forget that all issues in domain name proceedings have to be proved. It is no use just making assertions, as that will get you nowhere. You must have evidence to back up your contentions. After all, the UDRP Policy which is the main source on domain name arbitration makes this clear by providing in paragraph 4 of the Policy, after listing the three elements that must be proved, “In the administrative proceeding, the complainant must prove that each of these three elements are present.” To prove things, you need evidence. Also, as these proceedings are civil, the standard of proof is on the balance of probabilities.
2. The law.
It follows from the above, that both complainants and respondents should not get too pre-occupied with points of law. Domain Name cases are won on the facts and not on the law.
3. Presenting evidence.
Present your evidence in an understandable and logical order. Do not just throw it down in the Complaint or Response in one slab, as it will be hard for the panellist (the arbitrator) to follow. Try to confine each piece of evidence to one issue. Do not just assert the facts in the body of the Complaint or Response; it is much better if you put the evidence in the form of an affidavit or a declaration from a responsible officer in your company or organisation who should say that he or she can speak with authority on what exactly happened during the history of the case. Set the evidence out in a series of annexes, one per annex. Don’t forget that Rule 3 (b) (xiv) requires a complainant, and Rule 5 (c) (ix) requires a respondent, to include a Schedule, indexing your documentary evidence; try to make this Schedule user-friendly for the panellist, with a short description of what will be found in each piece of evidence; e.g. “Complainant’s trademark” or “Screenshot of Respondent’s website.”
4. Prior decisions.
Also, do not get too pre-occupied with previously decided cases. Domain name decisions, like arbitrations decisions in general, are not precedents, because every case is different and the decision is based on its own facts. Of course it is useful to be able to say that the point you are making was also decided in an earlier case, but that previous decision is not binding on your case.
If you are a Respondent, read the provisions of paragraph 4(b) and 4(c) before committing yourself to a defence. These two paragraphs set out what the Complainant may prove to establish bad faith, and what the Respondent may rely on to show it has a right or legitimate interest in the domain name ( “an RLI”); both lists are non-exclusive, meaning that you can rely on circumstances not in either list. But they will give a good idea of whether the facts will or will not amount to bad faith and whether, on the other side of the coin, you as the Respondent can show you have an RLI in the domain name.
Of course, the panellist keeps an open mind on every case and will study the evidence closely. Therefore, nothing in this article should be taken as an indication of what the view of any panellist might be in a real case. That will depend on the evidence and submissions that are made in each case.
By The Hon. Neil Brown QC – Domain Name Arbitrator