In the recent decision of Rotobrush International LLC v. Vacbrush a/k/a Ming Liu (FA 1253370, Nat. Arb. Forum May 8, 2009) through the National Arbitration Forum, a single member panel was faced with a dispute over four domains which included www.real-rotobrush.com, www.used-rotobrush.com, www.rotobrush-online.com, and www.rotobrush.org. Complainant, Rotobrush is in the business of manufacturing and distribution of air duct cleaning systems. They maintain a website at www.rotobrush.com. Rotobrush has a trademark for ROTOBRUSH, (Reg. No. 2,021,581) in connection with those goods since at least 1996. Respondent registered the disputed domains in July and August of 2008. The Respondent did not mount a defense or respond in any manner to the complaint.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.
The Panel began its analysis with the first prong, namely, whether the domain is identical or confusingly similar to the Complainant’s mark. The Panel found that all of the disputed domains contained Complainant’s entire ROTOBRUSH mark, even though some of them included generic terms such as real, used, or online in addition to the full domain name. Regardless, the Panel found that Complainant satisfied this element.
The second element, whether the Respondent had any rights or legitimate interest in the domains, was not such a clear path for Complainant. The Panel noted that Complainant must initially make a prima facie case, and if established the burden of proof shifts to the Respondent. The Panel stated:
Complainant has failed to allege any facts whatever in support of its bald assertion that Respondent lacks rights to or legitimate interests in the disputed domain names, including as to the specifics of Respondent’s use or nonuse of the domain names. Thus we are forced to conclude that Complainant has failed to make out a prima facie showing under Policy ¶ (a)(ii).
As a result, the Panel found that Complainant failed to prove up its second element. Although a Complainant must prove up all three elements, the Panel still decided to analyze the final prong, whether or not the domains were registered and used in bad faith. The Panel made the additional observations and findings:
Complainant has failed to allege any facts to establish that Respondent’s registration and use of any of the domain names here in issue was or is in bad faith. The mere assertion of bad faith without any supporting evidence is insufficient to justify a finding of bad faith registration and use of contested domain names under Policy ¶ 4(a)(iii).
Ultimately, the Complainant failed to satisfy the three elements of proof necessary for a UDRP case and the Panel DENIED the request for transfer.
DefendMyDomain Commentary:
This case illustrates that the Complainant must establish facts to support Respondent’s lack of legitimate interests and facts to support Respondent’s bad faith. Raw, unsupported legal conclusions, which mimic the UDRP elements are insufficient to meet a Complainant’s burden of proof.
