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No Standing for Similar that is not Confusingly Similar

If a domain name is similar but not confusingly similar to the trademark in which complainant has rights the complaint must be dismissed for lack of standing. This makes sense because if the string of characters forming the second level domain is identical in part but not confusing as to the whole of the trademark there can be no injury. It has been said that because of the need for language economy for memorable names small differences matter; for this reason non-confusing similarity is not actionable for cybersquatting.

But there are situations in which a thin line separates similar from confusingly similar. This is why in close factual circumstances, where assessing the totality of the evidence is important, panels ordinarily opt for finding confusing similarity. This means resting decisions on the second and third requirements. Where the totality of the evidence supports cybersquatting–using the domain name to phish for personal information of complainant’s customers, for example–there is reason to find standing, even though the Panel has to view the similarity more favorably to complainant.

Denying standing where the Panel found similarity of part was not confusingly similar to the trademark was the focus in Bridgewater Associates, LP v. Private Registration, FA1509001637996 (Forum October 19, 2015). In this case the Panel decided against standing because he couldn’t find the right kind of similarity between the domain name and the registered trademark: <bwater.site> and BRIDGEWATER; “b” does not resemble and cannot be read as “bridge.” The Panel held that “BWATER could refer equally well to many other terms (e.g., backwater, blackwater, bluewater, brightwater, broadwater, etc.” There is no problem with the logic, of course, but was it correct where there was also evidence Complainant used the abbreviation “bwater” for its business through its presence on the Internet with the address <bwater.com> and was also being targeted?

Evidently, the Panel considered the abbreviation of “bridge” to “b” in Complainant’s domain name insufficient to support jurisdiction. This is the closest of calls because if consumers are shown to recognize the abbreviated form of the trademark as a source of goods or services then other principles come into play. It may be that many businesses could claim “bwater” but only one of them is being targeted, and that is the Complainant. Should that not make a difference?

The wrinkle in the Panel’s determination is that he also found that Respondent had no right or legitimate interest in the domain name and had registered and was using it in bad faith; in fact, he found Respondent’s use of the domain name specifically targeted Complainant’s clients.  The Panel in Match.com, LP v. Bill Zag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004) seems to have had a better compass: “The Policy is designed to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another.” See also T-Mobile USA, Inc. dba MetroPCS v. amit patel / Lead Generation, FA1510001643152 (Forum November 19, 2015):

The at-issue domain name contains a dominant part of Complainant’s trademark, adds a hyphen, the generic term “franchise,” and appends a required top-level domain name, here “.com,” to the resulting string. Nevertheless, the differences between the <metro-franchise.com> domain name and Complainant’s METROPCS trademark are insufficient to distinguish one from the other for the purposes of Policy ¶4 (a)(i).

The rationale for the Panel’s determination in Bridgewater Associates rests on one of the mantras of domain name jurisprudence, namely that “[c]onfusing similarity is to be determined by reference only to the disputed domain name and the mark or marks in which Complainant claims rights. The manner in which the domain name has been used, including the content of the corresponding website, is not relevant for purposes of paragraph 4(a)(i) of the Policy.” This is not unsound, but it cannot be applied in all circumstances otherwise it gives a pass to cybersquatting and fraud.  Maxims should not be applied any further than necessary to achieve the objectives of the Policy.

Admittedly, when visually compared “bwater” cannot be said to be confusingly similar to “bridgewater” anymore than metro-franchise is to METROPCS,  but in the former the Panel denied standing while in the latter the Panel held it was; in both disputes it was plain that Respondents had Complainants in mind when they registered the domain names. In fact, this is precisely what the Panel found in Bridgewater: “Respondent’s registration and use of the disputed domain name for what appears to be a fraudulent phishing scheme aimed at Complainant’s clients or potential clients is evidence of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”In other words, Respondent had Complainant in its cross-hair but Complainant loses only because the domain name is not confusingly similar to Complainant’s trademark in its registered form. Should a complainant active in the marketplace by its abbreviated name be nonsuited because the domain name is not visually confusingly similar to the registered trademark?

It would be understandable to find no cybersquatting where there is no evidence of targeting, but once there is evidence there must be a different kind of analysis. There are abbreviation cases in which complainants were successful but the Panel in Bridgewater Associates found they were visually closer to the trademark; that is more “easily recognizable” as mimicking the trademark. Where the domain name is visually less close “a higher degree of similarity may be required where the mark exists within a crowded field.” Examples include <cap1.com> and CAPITAL ONE; <ms-sb.com> and MORGAN STANLEY and SMITH BARNEY); and <huffpo.com> and HUFFINGTON POST.

Micromeasuring distances between similar and confusingly similar is surely too Jesuitical! If the Panel is correct in its reasoning, then even if the trademark owner (but not the trademark) is targeted it can have no actionable remedy under the UDRP (and perhaps not the ACPA either) even though respondent’s conduct is unlawful, as it is in Bridgewater Associates. This suggests that the only recourse for such a complainant is a civil action, which is not exactly a remedy for either trademark owners or defrauded consumers who may be taken in by a respondent’s phishing of their personal information.

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

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