The basic ingredients for bad faith are knowledge and intention. Denying is more common than admitting them, and although having knowledge of a complainant and its trademark is not necessarily prejudicial to a respondent’s right or legitimate interest in the disputed domain name, proof of intention must be met by counter proof. While the foundation documents expressly excuse respondents from having to perform trademark searches – the fact of registration does not give rise to constructive notice – respondents are not excused from willful blindness to a holder’s trademark rights. The concept of “willful blindness” is expansive. Respondents cannot plausibly deny knowledge easily obtainable through Internet searches. Hayward Industries, Inc. v. WebQuest.com, Inc., D2009-1493 (WIPO January 27, 2010): “[n]otably, the Panel has independently observed that the most prominent organic search result for “hayward” leads to a website for Complainant (at www.haywardnet.com), so, as in Mobile Communication Service [D2005-1304 (WIPO February 26, 2004)] “even a cursory search [by Respondent] on search engines like Yahoo! and Google would have shown that [this word] is a trademark.”
Paragraph 2 of the Policy 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). “Knowledge is important since without knowledge (and in the absence of willful or Nelsonian blindness of the type described above) it will be difficult to show that a respondent has the necessary intent for bad faith,” Aubert International SAS and Aubert France SA v. Tucows.com Co., D2008-1986 (WIPO March 17, 2009).
“Actual” knowledge is construed to mean “awareness” of the complainant and its trademark. So, for example, denial of knowledge where the complainant markets its goods or services in the same geographic community or to the same group of consumers becomes increasingly implausible if the content of the respondent’s website contradicts its assertion of ignorance. In Dex Media, Inc. v. c/o DexLocal.com and Domain Manager MediaVision, D2009-1766 (WIPO March 4, 2010) the Respondent argued that because the Complainant did not file a trademark application for DEXLOCAL it was “fair to presume that [it] did not want to register the name <dexlocal.com> or use the term ‘dexlocal’” as a trademark. The argument was revealing “because it is consistent with awareness on the part of the Respondent of the Complainant’s DEX mark when the disputed domain name was registered.”
The content of the Respondent’s website in Dex Media supported this conclusion. When “coupled with the use of the disputed domain name for a website offering local listings of a directory nature, leads the Panel to conclude that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s DEX mark as to the endorsement of the Respondent’s website or of the services on its website.”
Gerald M. Levine <udrpcommentaries.com>