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Similarity of Domain Name and Trademark Unsurprising Where Parties Service Same Market

Although in Around The Rings Inc. and World Football Insider Inc. v. Dunsar Media Company Limited, Duncan Mackay, Sarah Bowron / Contactprivacy.com, D2010-0153 (WIPO April 7, 2010) the Panel found the similarity between domain name and trademark confusing on a side by side examination – “on this element [the parties’ cases] are finely balanced” – he held that the Respondent had a legitimate interest and did not register the domain name in bad faith. The Complainants hold a registered trademark in WORLD FOOTBALL INSIDER and the Respondent registered (together with several other domain names with different extensions) <insideworldfootball.com>. According to the Complainants the “Respondent has simply reversed the two components of the Complainants’ name and omitted an ‘r’….” Reversing or rearranging components is not an uncommon ploy in cybersquatting; omitting or substituting letters is a common feature of typosquatting. However, when the respondent makes an appearance and defends its conduct, the complainant has to do more than complain about similarity even if it is confusing.

To bolster its contention, the Complainants offered proof that the Respondent copied material from its website on two occasions and “backdated” them to make it appear that they were printed on “the date of the relevant event.” The Panel found this unpersuasive because both “news items relate[ed] to events in the football community. It is to be expected that the Complainants and Respondent will sometimes (and indeed often) publish articles on the same topic.” Since “the Complainants did not bring any evidence that the Respondent had seen the corresponding stories on the Complainants’ website … [t]he Panel accept[ed] the Respondent’s evidence that it obtained the information for its articles from press releases and syndication services which reported the stories.” The analysis pointedly emphasizes the importance of closing the circle; for when it remains open the inference is that there is no evidence to disprove the respondent’s submission.

However, the Respondent’s legitimate interest in Around The Rings turns on its proof that it was engaged in a publishing business servicing the same market which was ongoing “before notice of the dispute” [paragraph 4(c)(i) of the Policy]. Moreover, it held a registered logo trademark for INSIDE WORLD FOOTBALL and held other domain names “intended as an expansion of its ‘inside’ brand.” The Complainants failed to offer any countervailing evidence to establish “that the Respondent selected the disputed domain names to trade off the Complainants’ reputation.” In fact, it offered no evidence of its reputation and, although the parties inhabited the same niche, there was no evidence that the Respondent was aware of the Complainant.

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

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