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Concurrent Right to a Lexical String Registered by One Party as a Trademark and the Other as a Domain Name

Trademark law recognizes, with qualification that two parties can be entitled to the use of similar, even identical lexical strings where the concurrent user offers unrelated goods or services. The qualification is that “the Lanham Act’s tolerance for similarity between competing marks varies inversely with the fame of the prior mark,” Kenneth Parker Toys Inc. v. Rose Art Industries Inc., 963 F. 2d 350, 353 (Fed. Cir. 1992). The Court continues, “[a]s a mark’s fame increases, the Act’s tolerance for similarities between competing marks falls.”

This proposition is also central in UDRP jurisprudence. A domain name identical or confusingly similar to a trademark is no more than an ocular description of their appearance based on a side by side comparison. Where, without knowledge and in some instances with it (nominal fair use) [SAP AG v. Stephen M Meli, D2010-0760 (WIPO July 27, 2010))] a party operates in a different market or channel of trade [Streetwise Maps, Inc. v. Ryan Gibson, D2010-0984 (WIPO August 6, 2010)] and offers goods or services in different classes [G DATA Software AG v. Geologic Data Systems, D2010-0389 (WIPO May 10, 2010) (Respondent uses <gdata.com> as a domain name and e-mail address and the Complainant as its trademark; as such it has a right or legitimate interest in the domain name.)

The Complainant in Streetwise Maps located in the United States (Florida) alleges that Respondent (located in the U.K.) is a competitor in the market it serves. However, “markets” variably refer to geographical locations (International, regional, or local) or to customer or client bases wherever located. Parties can be distant from each other in a number of ways without collision. Argument that a respondent is a competitor – intending to suggest thereby that it should have been aware of the complainant – necessarily requires a threshold analysis of the parties’ locations and their products or services. The Panel in Streetwise Maps carefully parses what each party offers, to whom and their locations. “While Respondent does refer to maps on its website” (the Panel notes) it “does not offer to sell maps to the public or sell maps to the public on its website. Respondent offers its services to develop a system, not to sell products such as maps.” Further,

A review of Respondent’s website discloses that its pedestrian orientation and navigation systems include on-street information posts, mapping and directional panels for car parks and train and bus stations. The systems are produced purely for the client and if requested by the client they can also include a pocket map that corresponds with the on street units both in design and content. The system is sold as a whole unit to the client who then becomes responsible for the way in which they distribute or dispose of the pocket maps if they have chosen to include them in their system. Respondent does not publish the map and is in no way responsible for the distribution of any of the maps.

In contrast, “Complainant is in the business of producing and selling folding maps to the public … [it] produces and sells maps of many of the principal cities of the world as well as maps of underground transit systems. Complainant offers its maps to the public at its website <streetwisemaps.com>.”

Setting aside the issue of nominal fair use that implies knowledge of the complainant and its trademark or the respective timing of the domain name and trademark registrations there may still be no overlap in parties’ targeted customers and they may be geographically remote. In Streetwise Maps, when markets, products and services are examined for their specifics relieved of abstraction the Panel concluded that the parties were not competitors.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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