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The notion of constructive notice derives from US trademark law, specifically §1072 (Section 22 of the Lanham Act). In essence, as soon as someone has registered rights in and to a particular word, phrase or logo, the rights will be in the public domain, and everyone from the US is deemed to have notice of those specific rights.
For domain disputes, it is the consensus view that “Constructive Notice” or “Wilful Blindness” should not be applied outside the US (WIPO Overview 3.0, Paragraph 3.2.2),. One explanation for this reasoning is that a Respondent would have to have an extensive knowledge of trademarks and trademark law, before registering a disputed domain. Understandably, someone based in China will not necessarily know of trademark rights in Spain. Many WIPO decisions have discussed this principle and an example of which is seen in Aspenwood Dental Associates, Inc. v. Thomas Wade. Case No. D2009-0675, where Panellist, Richard G. Lyon, held that:
“The doctrine of constructive notice is rarely applied in Policy proceedings, WIPO Overview, paragraph 3.4. The exceptions to this general rule almost always occur in cases in which standard indicia of cybersquatting are present, Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172 – not the case here”.
Therefore, it is clear that the threshold for claiming constructive notice is very high and has only applied in clear cut cybersquatting disputes, where circumstances show that it was extremely likely that the Respondent had knowledge of the Complainant’s trademark rights in and to a particular word or phrase. One could argue that as the digital age grows more and more, the expectation of registrant’s to do basic due diligence checks is higher, especially with the existence of public trademark databases like the EUIPO and TM view, which will show trademarks at a click of a button. One case which particularly caught this writer’s eye was Honeywell Safety Products USA, Inc. v. Michele Dinoia, Macrosten LTD. Case No. D2015-1834, in which the Panellist, Gabriela Kennedy, held that Respondents’ who are experienced domain users must: “bear the burden for failing to act with as little diligence as performing a trademark or website search (at no cost at all) that would have disclosed the existence of the Complainant”. Decisions like this show that a higher burden is applied for experienced domainers, who through their day-to-day activity of registering domains, should know the importance of brands and registered trademarks and do basic due diligence checks before considering to a register a domain name. Building on Gabriela Kennedy’s comments, the decision given by Panellist, Sok Ling Moi in All Saints Retail Limited v. Wang Ya Ya. Case No. D2016-1809 explained that:
“In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the ALL SAINTS trademark and its extensive use by the Complainant. As such, a presumption arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain name.
In conclusion, one can now see how the principle of constructive notice is applied outside of the US in domain disputes. However, factors such as geographic distance and the reputation of a trade mark in a given territory are still important when making assumptions of a Respondent’s knowledge.
If you need advice on “constructive notice” with domain disputes, you can contact our legal department ([email protected]), or if you are an existing customer, please contact your Account Manager for further information.
Author – Dan Smith