3.4 No Constructive Notice Under UDRP and No Duty to Search, Generally
There is no place for the concept of “constructive notice” of trademarks under the Policy. The essence of a Complaint is an allegation of bad faith targeting of the Complainant. For that bad faith to be present, the Respondent must have actual knowledge of the existence of the Complainant, the trademark owner. If the registrant is unaware of the existence of the trademark owner, it cannot sensibly be regarded as having any bad faith intentions directed at the Complainant. If the existence of a trademark registration was sufficient to give the Respondent knowledge, thousands of innocent domain name registrants would be unjustifiably subject to UDRP proceedings.
It is well established that a respondent is not obliged to search the records of foreign trademark offices and that foreign trademark registrations do not put domestic domain name registrants on constructive notice of foreign trademarks. For example, a trademark registered in Germany does not put a United States respondent on notice of the Complainant’s German trademark.
Some UDRP Panels rely on the “willful blindness” doctrine to establish Respondent’s bad faith when, in Panels’ view, a Respondent fails to undertake good faith efforts to avoid the registration of trademark-abusive domain name. At the same time “willful blindness” should be applied sparingly as the general rule is that bad faith requires actual intent and there is no place in the UDRP for constructive knowledge. Moreover, in any such instances of the application of “willful blindness” it should be strictly limited to very well-known and distinctive marks such that it would be implausible for a Respondent to be unaware of the mark and put the domain name to any good faith use.
Additional Information
Relevant Decisions
ALTILINK Real Estate Hungary KFT v. Domain Administrator, SK Creations, Inc., WIPO . D2023-5401 <nestra.com>, 3-member Panel, denied
The Panel notes that domain name traders buying bulk or automated registrations may have an extra obligation to avoid registration of trademark-abusive domain names, such as using online databases to avoid trademark-abusive registrations. See WIPO Overview 3.0 section 3.2.3. In this case the Respondent asserts it has made such good faith efforts. Based on the case file, the Panel does not believe that the Respondent deliberately has acted under the concept of willful blindness.
Sage Global Services Limited v. Narendra Ghimire, Deep Vision Architects, WIPO DAI2023-0010, <sage.ai>, 3-member, Denied with two concurring opinions
From the concurring opinion of Tony Willoughby:
While some Panels take the view that domainers should conduct trade mark searches in respect of the names they register/acquire, such a view cannot sensibly apply to dictionary words in respect of which there are necessarily innocent, unobjectionable uses of the word/name irrespective of any trade mark registrations which may appear from the search.
Credit du Maroc v. Mira Holdings, Inc., WIPO D2022-4987 <cdmbank.com>, 3-member, Denied
Even though the Respondent is a professional domain name investor, on the facts of this case, the fact that the Respondent did not conduct searches of the Moroccan trademarks register is not evidence of bad faith.
In this case, the Respondent does not seem to have had actual knowledge and should not have constructive knowledge of the contents of the Moroccan register.
Kubota Corporation v. Media Matrix LLC, WIPO D2022-3397, <kubota.net>, 3-member, Transfer with Dissenting Opinion
Majority View:
Professional domainers making bulk acquisitions of domain names should not be held to any lesser standard than any other domain name registrant. The blind registration in bulk of domain names some of which obviously incorporate well reputed marks and their subsequent use to trade off the benefit of the reputation attaching to those marks, without any apparent attempt to mitigate the associated risks, should not be condoned under the Policy.
Dissenting View:
As noted above, in the present case, the Respondent has produced evidence that the word “Kubota” is not distinctive of the Complainant alone and indeed is in common use in several countries in different ways, including as a geographical term in the United States, where the Respondent is located. Under these circumstances, this Panellist is of the opinion that the Respondent’s registration of a large portfolio of domain names based upon the revenue generated by the portfolio, without being aware that the disputed domain name was part of that portfolio, should not be regarded as willful blindness towards the Complainant’s KUBOTA trademark.
Gridiron Fiber Corp. and Lumos Telephone LLC d/b/a Lumos Networks v. Yui Quan, NAF FA2110001970005 <lumos.com>, 3-member, Denied, RDNH
Complainant contends that Respondent should be deemed to have had constructive knowledge of Complainant’s Mark because it is federally registered…However, most panels take the opposite view. The limited circumstances under which it may be applied are not present in this case…This Panel believes that the correct approach does not impute to Respondent constructive knowledge of Complainant and Complainant’s Mark.
FPPM INTERNATIONAL / FLORENT POIRIER v. Above Privacy/Mira Holdings, Inc, CAC Case No. 103801 (2021), < paulmarius.com>, 3-member, Transfer
In the panel’s view, where a respondent acquires a domain name lapsed or otherwise corresponding to a trademark that has become distinctive of a complainant’s brand, and where the Complainant is the sole owner of that mark as it is here, a defense that respondent purchased the domain name without knowledge of complainant’s mark, ceases to be persuasive. This is particularly so since, as earlier noted, Complainant tops the Google searches in both versions for “Paul Marius” and Respondent is admittedly a professional domainer. One indicator of genericness is that the mark is actually used by many other users, as appears in the cases Respondent cites. This is not the case here. In fact, Complainant is the sole registrant of PAUL MARIUS. The Panel finds that PAUL MARIUS is not generic, but rather specific to Complainant as the only registered user of the mark.