Paragraph 2 of the UDRP reads that by “applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” (Emphasis added). The “knowledge” that the respondent must have is actual. The U.S. trademark doctrine of constructive notice is not recognized under the Policy. 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). However, this simply means that the complainant must offer evidence from which the inference of knowledge can be drawn. The requirement is less than certitude but more than statutory constructive notice. A leaning toward knowledge, however, is more likely to be found when the trademark in issue is particularly strong, heavily advertised or promoted, where the parties are in the same territorial or niche market, have had prior business dealings or are in close geographic proximity. The test of knowledge is “awareness.”
In Ford’s Produce Co., Inc v. Eric Botner, FA0910001288827 (Nat. Arb. Forum November 20, 2009) the Respondent admitted that “it was aware of the Complainant’s website and its offering of products prior to registering the name” although sought to excuse itself on the theory that its CEO “saw no conflict.” Beholders’ eyes, however, see what they want. While having knowledge is not necessarily inconsistent with good faith, it is not the test for determining it. Even if the Respondent knew nothing of the Complainant’s trademark for EARTH FAMILY, it admitted knowing the Complainant’s domain name, <earthfamilyfood.com>. In order capture some of the Internet traffic otherwise going to <earthfamilyfood.com> it varied the domain name by adding an “s” to “food” – forming <earthfamilyfoods.com>. This may raise an interesting question as to whether a respondent’s knowledge based on a domain name rather than the complainant’s trademark satisfies the bad faith requirement under the Policy. But, it appears that knowledge of one presumes the other.
A complainant’s argument, however, cannot simply be based on the theory of constructive notice. ENX (European Network Exchange) Association v. Ahven Tolunay, D2009-1218 (WIPO October 28, 2009). “The Panel … does not accept the Complainant’s submission that a doctrine of constructive notice applies in circumstances where there is a United States trade mark registration so as to render the Respondent necessarily aware of the Complainant’s mark.” There has to be evidence of notice of the kind that denial of knowledge is implausible. Panels have emphasized from the earliest decisions that doctrines of national law are not to be imported into the UDRP. The conclusion drawn from the evidence in ENX is a model of deduction. The Panel leads up to his conclusion by noting that the Respondent could possibly have become “generally aware of the Complainant’s trade mark as a consequence of its general repute,” or its location relative to the Complainant. The Respondent also “appears to have a variety of domain name registrations … quite possibly for re-sale purposes,” but this too is “not prima facie indicative of bad faith.” These bits of evidence, however, add up:
The coincidence of factors including the proximity of the Respondent’s stated address to the Complainant’s offices, the apparent provision of false owner name information and false address information both for the Disputed Domain Name and it seems for other domain names owned by the Respondent, are all indicative that the Respondent acquired the Disputed Domain Name in bad faith.
Moreover, the “inference of the Respondent’s registration in bad faith is only reinforced by the lack of bona fides of the website to which the Disputed Domain Name resolves, the lack of evidence of any goods or services provided by the Respondent and the substantial likelihood that the content of this website was created by the original owner of the Disputed Domain Name and has simply been replicated by the Respondent.”
Gerald M. Levine <udrpcommentaries.com>