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Adding or Subtracting Plural Suffixes

It is often pointed out that small differences (such as adding or subtracting plural suffixes) matter in determining whether a disputed domain name is confusingly similar to a mark, and if it is whether the respondent has any right or legitimate interest in it. This observation of small differences is traceable to a 9th Circuit Court of Appeals case, Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (2002) (“Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”). The same conclusion can be extended to the second element of the Policy. Trademarks composed of descriptive strings as easily describe a complainant’s business as they do the goods or services a respondent offers. The addition or subtraction of a plural in a similar string can be an acceptable difference. The question is whether or not the “small difference” is targeting the complainant’s trademark.

While  small differences are insufficient to avoid the domain name being confusingly similar to the trademark, it is sufficient to establish a right or legitimate interest in it as long as the domain name has a semantic connection to the content of a website or associated with respondent’s business. In ecarecenter, O.D., P.A. v. Eye Care Associates, ODPA, FA1107001398961 (Nat. Arb. Forum August 30, 2011) the Respondent added the plural “s” to the domain name, <eyecarecenters.com> and EYE CARE CENTER. Both parties are in the eye care business. The same result can be seen by subtracting the plural suffix seen in another case from last year, where the domain name was in the singular and the trademark plural, Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010) (WEBVISIONS and <webvision.com>). In both instances there is confusing similarity but no evidence of bad faith.

Pluralizing or singularizing descriptive strings is more likely to be legitimate as in Tire Discounters, Inc. v. TireDiscounter.com, FA0604000679485 (Nat. Arb. Forum June 14, 2006) where the Respondent registered its domain name in the singular, TIRE DISCOUNTERS and <tirediscounter>; and pluralizing, Sears Brands, LLC v. Domain Asset Holdings, FA0912001298052 (Nat. Arb. Forum January 22, 2010) (NORTHWEST TERRITORY and <northwestterritories.com>. On the other hand adding or dropping consonants and vowels is more likely to be typosquatting, as in Apple Inc. v. Andrew Sievright, Domain Source, D2010-1916 (WIPO December 8, 2010) (omitting final “e” from trademark, <appl.com>). Further examples include substituting adjacent keys on the qwerty keyboard, an ‘f’ for ‘g’ and ‘i’ or ‘p’ for ‘o’; an ‘x’ instead of a ‘c’; a ‘q’ instead of a ‘w’, of which there are numerous examples. More distant qwerty keys, “c” and “t” have not been found infringing.

Selecting a descriptive string as a signifier identifies the holder’s line of services without necessarily anchoring it to a particular party. Eye centers are fungible, as are “birthing” and “wellness” centers, Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier, FA0911001295573 (Nat. Arb. Forum January 20, 2010). The Panel in ecarecenter explains that “[o]ne who selects descriptive terms as their mark or brand may put sufficient time and money behind those terms to elevate them to a level of distinctiveness under the doctrine of secondary meaning, but that recognition and commensurate registration cannot take the words out of the common vernacular.” Also, the “words may continue to be used by all to convey their standard meaning.”

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