Holders whose trademarks are composed of phrases formed by combining ordinary words cannot monopolize other combinations that are similar in some respects but neither identical nor confusingly similar to their own invention. Respondents who vary the language to create a distinctive phrase similar to the complainant’s trademark may be acting in good faith even as they target a similar market of users. An example of this is Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO September 11, 2000) (CLUB 18-30 and <hot18to30.com>); or, more recently, Vanguard Trademark Holdings USA LLC v. Nett Corp., FA0905001262162 (Nat. Arb. Forum July 26, 2009): NATIONAL CAR RENTAL and <nationalrentacar.com>. The dissent in Vanguard found that the phrasing was similar but not confusingly similar; but, in any event, the Panel unanimously held that the Respondent proved its legitimate interest in the domain name.
In a phrase, confusing similarity is diminished by substituting a word that entirely alters its connotation. The Complainant in Napoleon Hill Foundation v. pmweb, FA0907001275894 (Nat. Arb. Forum September 28, 2009) is the registered trademark holder for THINK AND GROW RICH. The disputed domain name is <flipandgrowrich.com>. Sharing three quarters of the phrase – “and grow rich” – is not enough. The Panel held that
Having ‘flip’ instead of ‘think’ as the initial word changes the meaning of the phrase. The phrase ‘think and grow rich’ is general and does not sugest real estate transactions, while the phrase ‘flip and get rich’ suggests ‘flipping’ read estate to get rich.
The trick is to create combinations that cannot be varied or sundered without suggesting the trademark, which is difficult with common words. The Complainant’s trademark in PLENTYOFFISH MEDIA, INC. v. Mr. Antony Tran/home, anh tran, D2009-0476 (WIPO June 12, 2009) was PLENTY OF FISH which the Respondent varied with <freedatingfish.com>. In Napoleon Hill Foundation not only are the connotations different (which they are not in PlentyofFish Media), so too is the targeted market.