A defendant’s liability for infringement under trademark law rests on using the mark without the owner’s permission. Knowledge is not an element of proof for registered marks; it is imputed. Constructive notice is a statutory feature of the Lanham Act. Ignorance is not a defense to infringement or cybersquatting. This is not the case under the Uniform Domain Name Dispute Resolution Policy in which knowledge is an element of proof. Plausible ignorance could in fact be a defense. If there is no proof of knowledge there can be no bad faith registration. This raises the following questions, What proof is necessary? And how does complainant prove knowledge? The answer is that complainant’s evidentiary burden is not so strict as to require direct proof; knowledge can be inferred from the totality of the circumstances. This may include testimony of the mark’s penetration in the marketplace and evidence of targeting consumers for particular goods or services and redirecting them to complainant’s competitors.

The rationale for not applying the constructive knowledge doctrine is that “the essence of the complaint is an allegation of bad faith targeted at complainant,” The Way International Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (U.S. parties involving an unregistered mark). which requires proof that respondent actually knew or had reason to know of complainant’s trademark. The Panel in The Way International concluded that there was no place for the concept under the Policy because if “the existence of a trade mark registration was sufficient to give respondent knowledge, thousands of innocent domain name registrants would, in the view of the Panel, be brought into the frame quite wrongly.” Later Panels have agreed with this view. In Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex), FA0509000567039 (Nat. Arb. Forum November 10, 2005), for example, the Panel held that

if Complainant’s position were adopted, it would essentially establish a per se rule of bad faith any time a domain name is identical or similar to a previously-registered trademark, since constructive notice could be found in every such case. Such a result would be inconsistent with both the letter and the spirit of the policy, which requires actual bad faith.

There has developed over the course of the UDRP’s short life several different theories for determining whether respondents had the requisite knowledge to support abusive registration. By definition, knowledge presupposes the trademark predates the registration of the domain name. Complainant has no claim if its trademark had no market presence when respondent purchased the domain name. This was recently the message in Hippie Tours LLC v. Mansour Elseify and Crystal Elseify, D2014-1975 (WIPO January 2, 2015).

If the mark predates the domain name complainant has a claim on proof respondent purchased it intentionally to take advantage of the mark’s reputation in the marketplace. The burden is heavier on the descriptive – suggestive divide as the three member Panel points out in Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., D2014-1754 (WIPO January 12, 2015) (<electric football.com>). Whether respondent has the requisite knowledge has divided panelists from the earliest cases: “[it] underscores how difficult this issue has been in many cases” (footnote 1).

What constitutes knowledge is highly fact specific, of course, but in a regime in which there is no adversarial discovery facts have to be teased out from the evidence complainant has been able to marshal. In many cases the evidence for charging respondent with knowledge is inferential, but with strong indications pointing away from good faith registration of the domain name. The Tudor Games Panel presents a useful survey of the different theories other Panels have reached for and applied. Firstly, the Panel “need not and does not have to rely [on such concepts as to]

whether a respondent “should have known” of a trademark or “willful blindness” [two of the four theories of knowledge]. Rather, on record of the evidence and in the specific circumstances of the case, the Panel finds that Respondent had the requisite knowledge of Complainant’s mark to establish bad faith registration.

The “should have known” and “willful blindness” theories supplement constructive notice and a catchall “affirmative obligation on registrants more generally to make reasonable good faith efforts to avoid registering and using a domain name that is identical or confusingly similar to a mark held by others, for example, through an Internet search on the domain name through Google or Yahoo!.” Where imputed knowledge may be applied it would be limited to parties resident in the United States. In Tudor Games, Complainant is resident in the U.S.; Respondent is resident in the Barbados.

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