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Constructive Notice of Trademark Does Not Satisfy the Knowledge Requirement of UDRP

The Lanham Act, 15 U.S.C.A at § 1072 provides that registration of a trademark on the principal register is constructive notice of the registrant’s claim of ownership. This statutory concept eliminates lack of knowledge as a defense. The UDRP is constructed on a different model. The complainant has to establish that the respondent had actual knowledge of the trademark at the time it acquired the domain name. Awareness has been found to satisfy the requirement of actual knowledge. However, the “mere existence of Complainant’s trademark rights at the time Respondent registered the disputed domain name does not … create any presumption of knowledge,” Salmi Oy v. PACWEBS, D2009-0040 (WIPO February 4, 2009). Asserting knowledge does not prove it. Save the Children Federation, Inc. v. Proservices, D2011-0615 (WIPO May 19, 2011).

In Save the Children, the Panel “reluctantly” issued a Procedural Order (Rule 12[a]) to determine this precise point. He directed the Respondent to provide an answer to the following question: “In February 2011 were you aware of the existence of Save The Children Federation Inc.?” The question came with the following admonition

The Panel expects a single-word answer, “Yes” or “No”, to this question. Any answer will be deemed submitted under penalty of perjury. The Panel will not consider any material submitted by Respondent other than the verified answer to this question. The Panel has no power to compel an answer but reminds Respondent that an adverse inference may be drawn from her failure to provide one.

The not surprising answer was “No.” There is no way to look behind a certification or declaration absent other indicia.

The domain name <mysavethechildren.com> is clearly confusingly similar to the Complainant’s trademark SAVE THE CHILDREN – the addition of “my” does not distinguish it from the trademark – but the phrase is descriptive of the Complainant’s as well as the Respondent’s mission. As the Panel notes “whether actual knowledge of Complainant’s marks can be found or imputed, is a murky one.” A panelist only has the written record, which in this case includes the certification by the Respondent that at the critical moment of registration she had no knowledge of the Complainant’s trademark. Because the Panel does not have available cross-examination or discovery “[t]he determinative factor that tips the balance in this proceeding to a decision for Respondent” must be “other indicia of cybersquatting.” There were no “other indicia.”

There are UDRP decisions in which constructive notice is found to satisfy the requirement, but not without other indicia such as “pages of hyperlinks [and] multiple infringing registrations” that would allow the Panel to infer a level of awareness that would satisfy the requirement. This view is set forth in the WIPO Overview at 3.4: “some panels have been prepared to [apply constructive notice] in certain circumstances including where a respondent was located in the US and a complainant had a federal US trademark registered before the domain name was obtained by the respondent, and there are indicia of cybersquatting”.

The Respondent in Save the Children Federation has no right or legitimate interest but the evidence is insufficient to prove bad faith registration. The Panel’s nostrum (set forth in a footnote) is cautionary advice to the Respondent that should the Complainant commence an infringement action against her the legal standards favor the trademark holder. “Not only will constructive notice be available to Complainant, but trademark infringement (unlike the Policy) is a strict liability tort – bad faith is usually not required. Respondent should be advised to consider a reasonable settlement proposal from Complainant as an alternative to possibly lengthy and expensive litigation.”

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