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Identity of Terms Within a String Do Not Add Up To Confusing Similarity

Paragraph 4(a)(i) of the Policy is not satisfied by simply showing that the trademark and the domain name bear a similarity of parts, unless it suggests the whole. Whether the domain name is “confusingly similar” to the trademark focuses on differences in the composition of the string of letters, words or numbers. Prefixes and suffixes generally do not create a distinctive name – a geographic identifier for example added to a well known trademark is no more than the well known trademark with a geographic identifier, Red Bull GmbH v. Chai, D2003-0709 (WIPO November 11, 2003) (<thairedbull.com>, short for Thailand) – but added phrases to a dominant well known trademark can create an entirely new meaning, <synagisisbadforyou.com> and <synagisisnotsafe.com>, Medimmune, Inc. v. Jason Tate, D2006-0159 (WIPO April 14, 2006). Similarly, singularizing words (discussed in an earlier Note) as in Tire Discounters, Inc. v. TireDiscounter.com, FA0604000679485 (Nat. Arb. Forum June 14, 2006) (<tirediscounter> and TIRE DISCOUNTERS); and pluralizing, Sears Brands, LLC v. Domain Asset Holdings, FA0912001298052 (Nat. Arb. Forum January 22, 2010) (NORTHWEST TERRITORY and <northwestterritories.com>) create distinctive names.

The similarity that makes a domain name confusingly similar to a trademark must be confusing to an “objective bystander,” Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010) (analysis in concurring opinion, but dissenting on the first requirement and finding that <opensociety.org> not confusingly similar to OPEN SOCIETY INSTITUTE. The threshold requirement sets a low bar but small differences as noted above “can have a major effect on the way domain names are read,” The Football Association Limited v. Websitebrokers Limited, D2001-0156 (WIPO April 5, 2001).

“BETS” and “365” combined form the trademark BETS365 (distinctive by virtue of its having been registered), but “there is nothing in the evidence which would suggest that the Complainant has any rights in respect of the element ‘365′ on its own.” In bet365 Group Limited v. Domains by Proxy, Inc. / Steve Prime, D2011-1242 (WIPO September 14, 2011) the disputed domain names are: <365bets365.com>, <365casino365.com>, <365wager365.com>, and <365poker365.com>. Any combination that includes “365” and “bets” falls on one side of the line while “365″ combined with “casino,” “wager,” and “poker” falls on the other. “A straightforward visual or aural comparison of the Complainant’s trademark with the alphanumeric strings in these Domain Names can only result in the conclusion that they look and sound quite different from the Complainant’s BET365 mark.” The Panel held that

[T]he words “casino” and “poker” are not synonyms for the word “bet” in the English language, and they do not convey the same impression. One may “bet”, or place a “bet”, without going near a casino or playing poker. The fact that those words are terms which may be used in the Complainant’s field of business does not, in the Panel’s view, make them confusingly similar to the word “bet”.

One of the questions (although not asked by all panelists) is whether there is “a risk that Internet users may actually believe there [is] a real connection between the domain name and the complainant and/or its goods and services.” WIPO Overview 2.0, paragraph 1.2. The lower the risk, the less likelihood that the total composition of a domain name will be confusingly similar. The fault line can be seen in Open Society Institute where the majority found <opensociety.org> confusingly similar to the trademark (only to conclude that the Complainant failed to prove abusive registration) and the dissent on that issue found only similarity that would not be confusing to the “objective bystander.”

Panels that subscribe to the “risk” analysis on the standing issue (and that includes bet365) are essentially lifting the paragraph 4(a)(i) bar higher. That is why the Panel in bet365 and even more so the Panel in The Football Association make a point of analyzing the differences at the phonetic and syntactic levels:

Given that the Football Association has a protectible trading reputation in “The F A”, a second question arises. Is <thefa.com> identical with or confusingly similar to “The F A”? In such a comparison one disregards the addition of the TLD. Even so, the two marks are not identical and the issue becomes one of confusing similarity. While the practice of omitting spaces between words is characteristic of “domainspeak”, the addition of only a consonant and a vowel to the definite article in English makes for a special case. “Thefa” seems inherently a fabricated word. The combination which is the Complainant’s abbreviated name has to be picked out from it by deliberate mental effort. Not for nothing, in my view, is the Complainant’s own official domain in the form <the-fa.org>. The hyphen makes a crucial difference.

Even if confusing similarity is found between domain names and trademarks, giving the benefit of doubt to the complainant on the opening gambit, there is likely to be no “likelihood of confusion” which is a trademark term incorporated in paragraph 4(b)(iv) of the Policy.

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