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Failing to Make a Case for Confusing Similarity

Paragraph 4(a)(i) of the Policy sets forth the elements for jurisdiction. A complainant has standing to maintain a UDRP proceeding only if 1) it has an existing trademark to which 2) the disputed domain name is identical or confusingly similar. If the complainant either has no trademark or if it does but the domain name is not identical or confusingly similar to it the complainant has no standing to complain. As paragraph 4(a)(i) has come to be construed the trademark in which the complainant has a right is one that exists at the time the complainant commences the proceeding.

Of the seven disputed domain names in Igor Lognikov v. Web Ventures, Nerdec, Inc. and Charles Edmunds, D2009-1684 (WIPO January 29, 2010) the Respondent consented to transfer three, typographical variations of the trademark, TEMPLATE MONSTER; it contested four others of which three incorporated one of the words of the trademark, “template”, as in <templatetuner.com>, <template tunning.com> and templatestunning.com>. The fourth domain name was confusingly similar to the trademark by adding an “s” to “monster”, <templatemonsters.com>. The Complainant (represented by counsel) submitted a confusing complaint by omitting material facts including trademark information that was only presented in the response.

Although the Complainant alleged that only the “template” domain names were abusive, it offered no proof – indeed “made no attempt to address the issue of confusing similarity” in so far as the non-monster domain names were concerned. The Panel noted

If the Complainant is not prepared to make his case clear in this respect, it is not for the Panel to guess what that case might be. Therefore, so far as the “non-monster” Domain Names are concerned, the Panel finds that the Complaint has failed to make the requirement of “confusing similarity” as that term is understood under the purposes of the Policy.

For both “monster” and non-monster domain names, instead of relying upon its registered trademarks the Complainant appeared (inexplicably) to rest its claim for transfer on common law trademarks in <templatemonster.com> and <templatetuning.com>. However, the Complainant “does not identify where he claims ‘common law’ rights and mark. He simply asserts that the marks hav.e been used ‘in worldwide’ commerce.” The question here is whether a complainant residing in a jurisdiction that does not recognize common law trademark can be said to have a trademark right. In Igor Lognikov the Complainant was accorded ‘the benefit of the doubt’ because he appears to be based in the United States. The decision puts a class of complainants on notice. Making a case for common law trademark based on national jurisdiction is not an issue to be overlooked as the same panelist noted in one of his earlier decisions, Antonio de Felipe v. Registerfly.com, D2005-0969 (WIPO December 19, 2005) (“These rights derive from national laws and do not exist divorced from such laws.”) The answer may lie, as it did in Antonio de Felipe, with the market in which the complainant operates.

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