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**jberryhill** · 03-27-2003, 05:13 PM

"This is not my area of expertise but it is interesting. there are many other things that I would rather do than prepare a response!"

You are on the right track. Make sure to note where the UDRP itself refers to "demonstrable preparations to use" the domain name as evidence of legitimate rights or interests. And by "demonstrable", whatever you submit had better establish very well the date you had developed it and/or be supported by sworn statements by others.

One common mistake that a lot of self-filers make is that they assume the panelists know the Policy. There is a *reason* why complainants are required to send a copy of it with the complaint. Many panelists do not understand or follow the terms of the UDRP, because they sort of do this by the seat-of-the-pants and don't actually read the terms of the UDRP itself.

So, you should structure your response to follow the points of the UDRP in order. Depending on the circumstances, an outline I start with looks like this:

I. Overview
- just three or four sentences that encapsulate the issues of the dispute.

II. Identity or Confusing Similarity
- even in disputes where the complainant does have a trademark, it is a good entree' into the rest of the response to point out the limits of that trademark and the fact that it is a common word, aside from its trademark use.

III. Legitimate Rights or Interests
- Some panelists think the respondent has to have a trademark right to win on this point.

I always start this section with something along the lines of "The second requirement of the Policy is for the Complainant to prove the Respondent has no legitimate rights or interests in the domain name. Under this prong of the Policy, 'legitimate rights or interests' are not limited to trademark rights, but are intended to encompass any legal or equitable right, such as a reliance interest established by demonstrable preparations to use the domain name."

IV. Bad Faith
- The Policy lists a couple of non-limiting examples of bad faith. Recognize that they are examples, but walk through each of them anyway, and demonstrate that none have been proven by the Complainant. Then, you move into again explaining your purpose for registering the domain name and how it is in accordance with the generic meaning of the word.

V. Complainant's Bad Faith
- When the Complainant has done something wrong, which is not unusual, then you want to tell the Panel that they've been lied to, and explain exactly how and why the Complainant lied to the Panel in order to conceal their knowledge of your legitimate rights and interests and lack of bad faith in the domain name.

VI. Summary.

Hit each of your points with a single sentence. The complainant has failed to prove lack of legitimate rights or interests, because you have shown your demonstrable preparations. The complainant has failed to prove bad faith because you have explained your reasons for registering a common word for use in connection with its ordinary meaning. Additionally, the complainant has engaged in deliberately attempting to deceive the panel and making false statements under oath in the proceeding. For these reasons, you request that the panel deny the complaint.

Finally, you MUST request and pay for a three-member panel. The rules give you the "option" of requesting a three-member panel. Without going into a whole lot more explanation about the dramatic differences in outcomes between one and three member panel UDRP cases, I know that Ari, Howard, Steve, and the other lawyers here who do these things will tell you that defending a UDRP without a three-member panel makes as much sense as having sex with someone you just met and not using a condom. It is simply too risky.

03-27-2003, 05:13 PM	#19 (permalink)
jberryhill Philadelphia Lawyer Last Online: 01-06-2009 10:22 PM iTrader: (1) Join Date: Oct 2002 Posts: 2,497 DNF$: 4,007	"This is not my area of expertise but it is interesting. there are many other things that I would rather do than prepare a response!" You are on the right track. Make sure to note where the UDRP itself refers to "demonstrable preparations to use" the domain name as evidence of legitimate rights or interests. And by "demonstrable", whatever you submit had better establish very well the date you had developed it and/or be supported by sworn statements by others. One common mistake that a lot of self-filers make is that they assume the panelists know the Policy. There is a reason why complainants are required to send a copy of it with the complaint. Many panelists do not understand or follow the terms of the UDRP, because they sort of do this by the seat-of-the-pants and don't actually read the terms of the UDRP itself. So, you should structure your response to follow the points of the UDRP in order. Depending on the circumstances, an outline I start with looks like this: I. Overview - just three or four sentences that encapsulate the issues of the dispute. II. Identity or Confusing Similarity - even in disputes where the complainant does have a trademark, it is a good entree' into the rest of the response to point out the limits of that trademark and the fact that it is a common word, aside from its trademark use. III. Legitimate Rights or Interests - Some panelists think the respondent has to have a trademark right to win on this point. I always start this section with something along the lines of "The second requirement of the Policy is for the Complainant to prove the Respondent has no legitimate rights or interests in the domain name. Under this prong of the Policy, 'legitimate rights or interests' are not limited to trademark rights, but are intended to encompass any legal or equitable right, such as a reliance interest established by demonstrable preparations to use the domain name." IV. Bad Faith - The Policy lists a couple of non-limiting examples of bad faith. Recognize that they are examples, but walk through each of them anyway, and demonstrate that none have been proven by the Complainant. Then, you move into again explaining your purpose for registering the domain name and how it is in accordance with the generic meaning of the word. V. Complainant's Bad Faith - When the Complainant has done something wrong, which is not unusual, then you want to tell the Panel that they've been lied to, and explain exactly how and why the Complainant lied to the Panel in order to conceal their knowledge of your legitimate rights and interests and lack of bad faith in the domain name. VI. Summary. Hit each of your points with a single sentence. The complainant has failed to prove lack of legitimate rights or interests, because you have shown your demonstrable preparations. The complainant has failed to prove bad faith because you have explained your reasons for registering a common word for use in connection with its ordinary meaning. Additionally, the complainant has engaged in deliberately attempting to deceive the panel and making false statements under oath in the proceeding. For these reasons, you request that the panel deny the complaint. Finally, you MUST request and pay for a three-member panel. The rules give you the "option" of requesting a three-member panel. Without going into a whole lot more explanation about the dramatic differences in outcomes between one and three member panel UDRP cases, I know that Ari, Howard, Steve, and the other lawyers here who do these things will tell you that defending a UDRP without a three-member panel makes as much sense as having sex with someone you just met and not using a condom. It is simply too risky. __________________ John Berryhill Ph.d., esq. John-AT-johnberryhill.com Please do not send private messages via dnforum.com, email me directly.