Recent Case Notes & Commentary

PROOF OF BAD FAITH - ACTUAL NOTICE OF THE COMPLAINANT’S TRADEMARK

Under the UDRP, Complainants have to prove bad faith registration and use. One way to do this is to show that the registrant of the domain name, the party who becomes the Respondent, actually knew of the Complainant’s trademark, which was then copied or used in the domain name.


Sometimes, complainants rely on constructive notice; i.e. that there were enough facts around to enable the panel to conclude that it can be assume that the registrant knew of the trademark or that it could or should have known of the trademark. There are cases where a complainant has succeeded, relying only on constructive notice. Constructive notice, however, is not guaranteed of success when relied on, and many panelists say that actual notice must be proved.


It can be difficult to prove that a registrant had actual knowledge of the trademark. But it can be proved and complainants should try to do so. Thus, if, for example, the actual trademark is incorporated in the domain name, it can be said that the registrant probably had actual knowledge of the trademark.


But if all that the complainant can rely on is that, for example, the trademark was registered in a country other than the respondent’s domicile and that the respondent could have looked the trademark up before registering the domain name, the complainant will have an uphill battle.


Complainants are therefore well advised to put in all the evidence they can find to show actual knowledge, as this will strengthen their case; for example:

  1. The complainant can prove that it did business in the respondent’s country of domicile, and that its trademark was registered in that country;

  2. The respondent has used the entirety of the trademark in its domain name, to the extent that it looks as if the respondent just copied the trademark into the domain name;

  3. If the website to which the domain name resolves has some familiar echoes of the trademark and the trademark owner’s business, say in its content, layout or presentation.


As in all domain name cases, remember they will be won or lost on the evidence, so it is important for each side to collect and submit their best evidence on each point.


BUT REMEMBER ANOTHER  ISSUE...

When considering this issue, also consider if the Respondent can argue that although the trademark may be found in the domain name,  it is a generic expression, used on the website to which it resolves only in its generic sense and not to target the complainant or confuse the market. If so, it may be that this gives the respondent a right or legitimate interest in the domain name and negates any suggestion that it registered or used the domain name in bad faith. See the way this argument shapes up in Parnassus Investments v.  ZULFIQAR ALI, Forum (FA1707001739234, 24 August 2017).