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Assessing Similarity of Part for Confusing Similarity of the Whole

The test for establishing confusing similarity is relatively modest. Low though the bar is set, however, it is not satisfied by simply showing that the trademark and the domain name bear a similarity of parts. “The concept of ‘confusingly similar’ lies at the very heart of all trademark conflicts, where the test is whether the names are phonetically, visually or conceptually similar.” Advance Magazine Publishers v. MSA, Inc. & Moniker Privacy Servs., D2007-1743 (WIPO Feb. 28, 2008). In assessing domain names under the first element of the Policy panelists apply rules familiar to trademark infringement. Put another way, Todito.com, S.A. de C.V. v. Affordable Webhosting, Inc., D2004-0688 (Nat. Arb. Forum Oct. 11, 2004):

when determining whether . . . similarity may give rise to situations of confusion or false association, it is necessary to consider not only the degree of similarity of the terms in the strict sense but also the degree of distinctiveness of the mark given that, obviously, the greater the distinctiveness or originality of the registered mark, the greater the risk of confusion.

A good summary of views is set out in salesforce.com, inc. v. Domain Admin / Internet Venture Holdings, Inc. (ivh.com), FA111100 1416951 (Nat. Arb. Forum January 5, 2012). Letters and words added to or subtracted from the trademark are evidence of confusing similarity if the similarity of a part suggests the whole, but not confusingly similar if the whole contains its own meaning and the domain name is used consistently with it. Letters and words added to or subtracted from the trademark are evidence of confusing similarity if the similarity of a part suggests the whole.

Thus, the mere addition of a letter, or the creation of similar word, can create a domain name that is confusingly similar to a mark. Either the variation is phonetically identical to the mark or it renders the domain name indistinguishable from it. To illustrate the first example, substituting a “k” for the letter “c” does not change the pronunciation of the word, as in ECOLAB and . Ecolab USA Inc. v. Tomasz Kluz / Ekolab s.c. Tomasz I Aleksandra Kluz, FA 1386906 (June 3, 2011). The second example is WIRED and <wwwwired.com> where “wired” is the dominant element of the mark. Advance. In Ecrush, Inc. v. Cox, Davis & Simpson, LLC, D2004-0552 (WIPO Sept. 11, 2004) (ESPIN THE BOTTLE and) the Respondent changed a single letter, “i” for “e.” The Panel found that the “one-letter change is not a misspelling of Complainant’s mark that results in an otherwise nonsensical word or phrase; on the contrary, the Disputed Domain Name and Respondent’s other domain names are everyday phrases incorporating the name of the parlor game.”

“These cases” (the Panel in salesforce.com explains)

are in contrast to the present case. First, the word “forces” has an apparent relationship to the military, thus having no evident connection to any business activity of the Complainant. Second, as to SFORCE and FORCE.COM there is no phonetic or visual similarity between the domain name and Complainant’s marks. Although the word “forces” is arguably visually similar to Complainant’s FORCE mark, the lack of distinctiveness to the mark, and the demonstrably different meaning of the words, results in a lack of any confusing similarity between the two.

The dissenter in Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010) – who is the sole panelist in salesforce.com – proposed that the similarity must be confusing to an “objective bystander.” Applying that standard he rejected <opensociety.org> as being confusingly similar to OPEN SOCIETY INSTITUTE). However, the “objective bystander” standard carries a burden of subjectivity. For this reason, Panels generally tend to give complainant the benefit of the doubt on this element. In salesforce.com the objective bystander (as fictively breathed into life by the Panel) is called upon to make an assessment whether the domain name is confusingly similar to FORCE. Framed by the Panel in Advance, the question is whether the “alphanumeric string comprising the challenged domain name is identical to Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name is ‘confusingly similar’ to the mark.”

Whatever similarity in part between trademark and domain name does not prove confusing similarity to the whole.

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