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Proving Reputation to Counter Denial of Knowledge

Companies come and go and reputations grow or wither, but at the start new businesses are one among many offering similar goods or services. When parties acquire their respective interests close in time and are geographically distant from each other the question of the respondent’s knowledge of the trademark holder is a significant factor in determining parties’ rights. Knowledge can be inferred from the complainant’s reputation. The more it has and the wider its sales the greater the likelihood that the complainant and its trademark came to the respondent’s attention and this and other evidence can point to abusive registration. Lack of market penetration is likely to undermine a complainant’s contention that the respondent registered the domain name to take advantage of the trademark. Woe betide a complainant who proves only its reputation within a year or two of commencing proceedings. Lack of proof suggests the complainant had no reputation earlier in time than the evidence it offers.

The disputed domain name <www.wallpaperdirect.com> in C Brewer and Sons Limited v. Vertical Axis Inc. / wallpaperdirect.com/ c/o Nameview Inc. Whois IDentity Shield, D2009-1759 (WIPO April 11, 2010) was registered in 2002; the Complainant has been “operating its online business under the Trade Mark via its ‘www.wallpaperdirect.co.uk’” since September 2000. “The Respondent has stated that it did not know of the Complainant or its registration for the Trade Mark when the Respondent registered the disputed domain name.” The parties are geographically distant from each other. The Respondent may be mendacious – it has been party to prior UDRP proceedings, albeit winning more than it lost – but proof of knowledge is the Complainant’s burden.

One tack for a complainant is to demonstrate that its reputation traveled even to the far corners of the earth and that its trademark is and was well known in the country of respondent’s residence. In C Brewer, however, the Complainant offered evidence limited to “its sales in 2007, 2008 and 2009 … [together with] evidence of its advertising expenditure in 2008 and 2009, and a reference to the Complaint being quoted in an April 2009 article in the United Kingdom broadsheet newspaper, ‘The Independent’.” This is not good enough to settle the question that it was in 2002 what it claims for itself in 2009. “Is” is not “was.” We have met this problem recently in Transportes AEROMAR S.A. SE C.V. v. Aeromar, Inc., D2010-0098 (WIPO March 19, 2010); and Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010). In contrast, a trademark composed of a generic term or common word that achieves an International reputation “puts the Complainant’s claims on quite a different footing,” Easygroup IP Licensing Limited v. N. Hilton, Easycentre.com, D2005-0935 (WIPO October 31, 2005) (<easycentre.com>).

It cannot be said, even by its most sympathetic admirer that Complainant’s WALLPAPER DIRECT achieved in its early years an International reputation such that the Respondent would be guilty of bad faith when 8 years earlier than the commencement of the UDRP proceedings it registered a generic domain name. Although it “has been long-established that the doctrine of laches has no bearing on domain name proceedings filed under the Policy … delay, together with the lack of evidence of goodwill and reputation in the Trade Mark when the disputed domain name was registered, and the Respondent’s assertion that it had never heard of the Complainant when it registered and commenced use of the disputed domain name, gives rise to the inference that the disputed domain name has not been registered and used in bad faith.” Neglecting proof of reputation assists the respondent.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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