You Can't Just Assume They Knew

What Is Actual Knowledge?

As we often say on this site, evidence is vital in domain name proceedings, so we will say it again. Evidence is vital in domain name proceedings. Just how vital has been shown again in a recent decision where the Complainant failed.

The decision is Forma Brands, LLC v. Shan Zhou / Rithvik Rith / Shanmukh Gala / Wii Buu (FORUM Case FA2606002225621, July 7, 2026).

The Complainant, a distributor of make-up products, failed because the evidence fell short of what the Panel required. In particular, what was lacking was evidence that the domain name was registered and used in bad faith.

When it turned to assess whether the registrant of the domain name had proved bad faith, the Panel started off with the proposition that this necessarily required proof that the Respondent (the registrant of the domain name) had intended knowingly to trade on the goodwill of the Complainant, meaning that it had intended to target the Complainant's trademark. Thus, the Complainant had to show that the Respondent  actually knew of the Complainant or its rights in the trademark when it registered the domain name.  Actual knowledge was required and constructive knowledge is not enough.

So, how do you prove actual knowledge?

The first thing to get a hold on is that it is certainly not enough simply to assert that the Respondent had actual knowledge of the trademark. Indeed, it might be doubted whether such an assertion is evidence at all (except, perhaps, where the Complainant or its attorney makes a declaration or swears an affidavit to that effect and on whatever evidence it can muster up to prove the point).

So, if an assertion is not enough, what would be adequate evidence of actual knowledge by the Respondent?

The Panel in the FORMA BRANDS case gave 8 examples of  evidence that has been accepted by Panels as proving the point:

(a)   use of the domain name in direct competition with a trademark owner;

(b)   impersonation of the trademark owner;

(c)   evidence that the parties were operating in the same market segment;

(d)   the parties being physically located in the same general geographic area;

(e)    a pattern of bad faith conduct;

(f)     actual prior association between or among the parties;

(g)   the distinctive nature of the trademark; and

(h)   the extent to which the trademark has been publicized and is known as a source indicator of the Complainant.

That might seem to be a lot to expect a complainant to adduce in evidence. But the advantage of having such a list is that it is a sensible and realistic guide or check-list for practitioners to scout around and produce evidence of any of the above criteria. An obvious one would be to ask the Complainant if it has had other dealings with the Respondent, which should be easy enough to show. Also, if both parties are located in the same city, that would also be useful evidence.

The Complainant failed in the FORMA BRANDS  case because the Panel felt that its (the Complainant’s) evidence did not come up to scratch and it really had not brought the Respondent within any of the above criteria. It would have been entirely different if the Complainant had shown that the trademark or brand had been so successful that it must have become very well known by the likely audience, such as, in the present case, the likely market for the Complainant’s brand of make-up items.

One assessment I have made in decisions (on appropriate evidence) is that the Respondent’s machinations to carry out a probable fraud were so intricate that it could not have carried out its subterfuge if it had not had actual knowledge of the trademark.

As with all issues on evidence, the balance of probabilities is the standard that must be met.

Again, this evidence that is required it vital and the present decision is a salutary reminder of just how important it is.