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Proof of Actual Knowledge Required Where There is Plausible Denial

The greater the geographic distance between parties the more plausible the respondent’s denial that at the time it registered the domain name it had any knowledge of the complainant or its trademark. Plausibility is bolstered by the commonness of the words comprising the trademark and complainant’s failure to submit any evidence of its reputation in the respondent’s country that would support an inference of prior knowledge. The Complainant in Juicy Details B.V. v. Another.com, D2010-0809 (WIPO July 15, 2010) acquired a Benelux trademark in the same time frame that the respondent registered the domain name <juicydetails.com>, but operates in a different market than the Respondent.

“Juicy” in combination with “details” is a metaphor. Colloquially, it “denotes gossip or titillating information.” The Complainant, on the other hand, uses the phrase in its literal sense, for its operation of “juice bars.” Knowledge of a trademark registered in a foreign jurisdiction is not established by assertion; the UDRP does not embrace the theory of constructive knowledge. In Juicy Details, “[t]here is no evidence in the record that the Complainant operated or advertised in the United Kingdom, where the Respondent is located, in 2002.” Thus,

it is not clear how the Respondent would have been aware of the Complainant’s mark in May 2002, when it registered the Domain Name in the United Kingdom, unless it examined the records of Benelux trademark applications.

But, charging a respondent of an awareness of foreign trademark applications assumes more than the record allows. There is no legal requirement to examine foreign trademark databases. The WIPO Final Report at paragraph 103 states that “the performance of a prior search for potentially conflicting trademarks should not be a condition for obtaining a domain name registration.” In Juicy Details, the Panel “does not read the Policy as requiring such an investigation,” at least where the disputed domain name involves common words used in their metaphoric sense. The Respondent states that

it purchased the Domain Name in furtherance of one of its domain-related businesses, “to offer a vanity email service built around words that would be perceived by customers as an amusing identifier”. Since the Respondent is English and offers a variety of domain name services, this proposed use of the Domain Name is credible.

This is more plausible than the Complainant’s “improbable theory that the Respondent was aware of the Complainant’s new mark in May 2002 and sought to exploit it.” The Complainant’s problem is one frequently seen in these UDRP proceedings. Later acquired reputation is not evidence of respondent’s bad faith when the complainant had none. Plausible denial demands affirmative proof of knowledge. Unless there is evidence that the complainant’s reputation had actually traveled to the respondent’s market and its trademark recognized by the purchasing public as the source of good offered it falls short of undermining the respondent’s good faith registration (however the website may be used).

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement here

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