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Small Differences Can Have a Major Effect on the Way Domain Names Are Read

The threshold requirement sets a low bar but small differences “can have a major effect on the way domain names are read,” Travellers Exchange Corporation Limited v. FairFX Plc. D2010-1056 (WIPO July 29, 2010). The Complainant holds the trademark TRAVELEX; it complained that the Respondent’s registrations of <travelexexpensive.com> and <travelexpensive.com> were abusive. The first of the two disputed domain names incorporates the trademark; the second either consists of two dictionary words “travel” and “expensive” or the trademark plus “pensive.” But, “pensive … is [a word] which is much less widely used. In the Panel’s view Internet users are most unlikely to recognize the Domain Name by itself as comprising the words “Travelex” and “pensive.”

There are several classes of domain names that may be similar to trademarks without being confusing. The omission of a single letter from the mark such as an “s” in Tire Discounters, Inc. v. TireDiscounter.com, FA0604000679485 (Nat. Arb. Forum June 14, 2006) (comparing TIRE DISCOUNTERS and <tirediscounter>), for example, is one of those small differences that matters in this context, citing Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002): “[s]imilarity 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.”

There are, also, those domain names for which trademark holders have disclaimed generic words to satisfy legal requirements or whose registration has been permitted subject to disclaimer and proof of continuous use [15 U.S.C. § 1052(f) ]. Similarity in other instances may not be confusing since the trademark is not the disclaimed elements, as in design plus word marks. Another class is illustrated in General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, D2006-0334 (WIPO August 13, 2006) (cited in FairFXsame, same Panel). At issue in that case were several domain names, most of which passed the threshold test and were transferred to the Complainant. The similar but not confusing domain name was <eege.com>.

The Panel in General Electric noted that “the separation of elements of a string of characters by a hyphen can be crucial.” The domain name <eege.com> is on one side of the divide and <ee-ge.com> on the other. From “one point of view there is only a slight distinction between <eege.com> and <ee-ge.com>, namely, the interposition of a single hyphen,” but it makes all the difference, citing The Football Association Limited v. Websitebrokers Limited, D2001-0156 (WIPO April 5, 2001). That Panel held

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.

The absence of a hyphen made no substantive difference in Chernow Communications, Inc. v. Jonathan D. Kimball, D2000-0119 (WIPO May 18, 2000) (C-COM [the registered trademark] and <ccom.com> [the disputed domain name]). That is, the Panel noted that the use or absence of punctuation did not alter the fact that a name is identical or confusingly similar to a mark, a position that is consistent with United States court decisions dealing with trademarks. As we see, however, the generalization must be qualified because in certain factual instances the absence of a hyphen (or the addition of one) makes a difference in respondent’s favor.

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

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