Denying relief for cybersquatting is generally supported by lack of proof of abusive registration not for inexactitude in characterizing whether a domain name is identical or substantially similar to a trademark in which complainant has a right. However, the formal requirement under paragraph 4(a)(i) of the Policy requires proof that it is one or the other, but the bar for this element in low. In Homer TLC, Inc. v. Flavio Quaranta, FA1412001593593 (Nat. Arb. Forum January 8, 2015) Complainant alleged that <hamptonbay reviews.com> was identical to HAMPTON BAY. It is not identical; it is substantially similar. For this inexactitude the Panel denied relief. It justified its decision by citing five other cases by the same Complainant represented by a national law firm making the same mistake.
However, of the five other cases four by different panelists the requested relief was granted so the alleged mistake, although noted, is inconsequential. The fifth case, Homer TLC, Inc. v. James Samuel / Personal, FA1402001546076 (Nat. Arb. Forum March 31, 2014) was decided by the Flavio Quaranta panelist who also granted relief but with an admonishing footnote:
The Panel is troubled by this lack of precision, particularly in light of the fact that the same Complainant, in a proceeding involving nearly the same issue and in which it was represented by the same law firm, was admonished by the Panel in that proceeding that the proper argument is confusing similarity rather than identicality.
The sixth case proved too much for the Panel! The penalty of inexactitude is dismissal: “Under the circumstances, the Panel considers it reasonable to consider only the precise allegation made by Complainant.”
Reasonable minds can differ, but is dismissing a complaint for inexactitude in characterizing a domain name as identical when it is confusingly similar a mistake deserving of dismissal? The point of a UDRP proceeding is not form but substance. A finding based on paragraph 4(a)(i) that the “The proper claim here, of course, is confusing similarity rather than identicality” is form. Yes, of course, <hamptonbayreviews.com> is not identical to HAMPTON BAY and the attorney who drafted the complaint should be duly caned for not paying attention.
The issue of form over substance has been previously argued in a case in which the same panelist was a dissenting member of the Panel. He stated in Chernow Communications, Inc. v. Jonathan D. Kimball, D2000-0119 (WIPO May 18, 2000) (C-COM [the registered trademark] and <ccom.com> [the disputed domain name]) that he saw “no need to supplement the allegations that Complainant actually made with others that Complainant chose not to include, or to afford Complainant a second opportunity to allege what frankly is an obvious component of a prima facie case under the UDRP.”
The Chernow Communications majority rejected this reading of the law entirely as overly academic. The dissent in that case was the sole Panel in an earlier case, Shirmax Retail Ltd./Detaillants/Shirmax LTEE v. CES Marketing Group, Inc., AF0104 [eResolution March 20, 2000) (the <thyme.com> case, complaint dismissed) in which he began formulating the view that emerged full blown in Chernow Communications. The majority would have nothing of it:
The majority believe that the discussion of the dissent and those cases it cites elevates form over substance. Moreover, this disagreement over what is necessary for a second level domain name to be identical to a trademark or service mark, rather than merely confusingly similar, is more than academic. If the dissent’s reasoning were accepted it would be very easy in the future for a prospective cybersquatter, by inserting or deleting a hyphen, to avoid the impact of the holding in Shirmax Retail …. If the dissent’s reasoning were to be adopted, a would-be cybersquatter could simply eliminate the hyphen in ‘Hewlett-Packard’ or insert a hyphen in ‘Microsoft’ and thereby avoid an automatic finding of bad faith under ¶4(a)(i) of the Policy. Such conduct should not be encouraged.
The fact is the view that inexactitude in characterizing a domain name as identical or confusingly similar deserves dismissing the complaint has no precedential support. It is supported by no other panelist. Which Panel a Complainant draws is sometimes the difference between winning and losing. In essence the Panel in Homer TLC, Inc. v. James Samuel / Personal refused to consider the substance of the allegations of cybersquatting. It is unfortunate that the Panel allowed his irritation with counsel to fog his usual acuity and unfortunate too for the Complainant that it drew this Panel. This is not to excuse Complainant’s counsel for inattentiveness of the threshold requirement of proof; but admonishment is one thing, dismissal for such a mistake another.
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.