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Falling Short of Confusing Similarity

Similarity in some respects, either of one of two common words or some identical syllables within a word, does not add up to confusing. The threshold test is simply “comparing the disputed domain name with the mark relied upon, both visually and phonetically, and by comparing the respective meanings which each conveys,” RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov, D2010-0696 (WIPO June 22, 2010). “The limited nature of the exercise does not call for any consideration of extraneous material, such as what might appear on a website at the disputed domain name,” citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, at para 1.2: “the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity …”).

The domain name <rapidbay.net> is not confusingly similar to RAPID SHARE; <caisinos.com> is not confusingly similar to CASINO.COM [Mansion (Gibraltar) Limited and Provent Holdings Ltd. v. Agens PSC, D2010-0584 (WIPO June 22, 2010). The only common feature in the first is “rapid” and in the second “sino”.

The Respondent in the second case avoided a finding of typosquatting because it appeared and explained the additional “i” and the reason for pluralizing the domain name. Using the word “casino” or “casinos” for a gaming website is not evidence that the Respondent had any knowledge of the Complainant. The explanation for the “cai” is that “Respondent’s client, CAI, holds rights to a Community Trademark for CAISINOS.” The disputed “trademark shows a wordplay between the three letters ‘CAI’ of ‘Casinos Austria International’ and the generic term ‘casino’.” In view of the explanation, “the Panel [did not] find it necessary to decide [the threshold] element under the Policy.”

In RapidShare, the “only relevant right they have proved is a right in the expression ‘rapidshare’. The issue is whether the use of the word ‘rapid’ in both RapidShare’s mark and the Domain Name, is enough to get the Complainants over the line on the ‘confusingly similar’ issue. On balance, the Panel is not satisfied that it is.” The reason for this is that

First, “rapid” is common word in the English language, and the Panel has little doubt that it must be used in thousands of business names around the world, none of which have any connection with the Complainants…. Secondly, the word “bay” neither looks nor sounds like the word “share”, and the Complainants have not suggested that “bay” has some special meaning which might cause an Internet user to make a mental link between the Domain Name and RapidShare (or the concept of “sharing”). The words “share”and “bay” are not obvious synonyms.

In order to get to the issue of bad faith registration and use “the Complainants had to ‘get to first base’ by making out their case under Paragraph 4(a)(i) of the Policy,” RapidShare. Neither Complainant in these cases got to “first base” although for different reasons. Rapid Share because the Complainant could not prove that the linguistic combination of the disputed domain name suggested its trademark in the public’s mind; and, Casino.com, because the Respondent’s explanation of the first syllable “cai” (as identifying itself to the public) showed that it was a distinctive entity operating within the gaming niche. At best there is similarity of parts but not of the whole.

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

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