The question of what constitutes notice of the dispute arises in connection with paragraph 4(c)(i) of the Policy. The respondent must satisfy each of three elements: 1) before any notice of the dispute, 2) it has used or made demonstrable preparations to use the domain name, 3) in connection with a bona fide offering of goods or services. “Notice” has been construed to mean actual notice. It is not “notice” to have a registered mark on the Principal Register. “Notice of a mark is not necessarily notice of a dispute,” Leap Real Estate Systems, LLC. v. BytePlay Limited, D2009-1290 (WIPO November 25, 2009) (<dothomes.com>).
Paragraph 4(c)(i) should be read on two levels. The first explicitly addresses the economic issue, namely the respondent’s right to continue using the disputed domain name as long as it is “in connection with a bona fide offering of goods or services.” It is necessary to qualify the “right” because under some readings of the policy a respondent can lose its legitimate interest in the domain name by subsequently using it in bad faith. A respondent who satisfies the three elements has a legitimate interest in the disputed domain name, even though it has no right to the incorporated mark. The second level implicitly warns the complainant that failing to police its trademarks has consequences.
“Before any notice of the dispute” means that the respondent’s actual or demonstrable preparations to use the domain name existed earlier than the commencement of the UDRP proceedings. The defense is phrased in the past tense, “have used” or with reference to demonstrable preparations has already taken the prerequisite steps to use the disputed domain name. The use that qualifies as good faith must be continuous from the past to the present. Intended future use is not a good defense. Neither is subsequent good faith a cure for earlier bad faith.
For the Panel in Leap Real Estate Systems “it is possible for ‘notice of the dispute’ to occur in ways other than, and thus at times earlier than, the filing of the complaint or the dispatch of a cease-and-desist letter.” “While such notice need not be in writing – and paragraph 4(c)(i) is devoid of any such written requirement, due process requirements dictate that the complainant’s objections must be adequately communicated to the respondent both in an appropriate manner and with sufficient content to properly place the respondent on notice of its objectionable conduct,” CafePress.com v. Michael Fragomele, FA0502000428848 (Nat. Arb. Forum April 27, 2005).
The circumstances for proper notice, however, differ to the extent that the trademark is well or less known in the respondent’s market. Conversely, the lesser the presence or lower the classification of the trademark, the greater the need for prompt and explicit notice. It seems to [the] Panel in Leap Real Estate Systems “that it should only be said that the respondent has ‘notice of the dispute’ when, at the very least, the respondent was, or reasonably should have been, aware both of the existence of the complainant’s mark and of the other facts that are necessary for a complainant to have reasonable prospects of success in an action under the Policy.”
Gerald M. Levine <udrpcommentaries.com>