Trademark law recognizes with some qualification that two parties can be entitled to use similar, even identical lexical strings where the concurrent user offers the public unrelated goods or services. The qualification is that “the Lanham Act’s tolerance for similarity between competing marks varies inversely with the fame of the prior mark,” Kenneth Parker Toys Inc .v. Rose Art Industries Inc., 963 F. 2d 350, 353 (Fed. Cir. 1992). That is, “[a]s a mark’s fame increases, the Act’s tolerance for similarities between competing marks falls.” This proposition is also a central tenet in UDRP jurisprudence. A domain name identical or confusingly similar to a trademark is no more than an ocular description of its appearance based on a side by side comparison with the trademark. Where, without knowledge and in some instances with it, as in cases of nominal fair use for example, a party operates in a different market or channel of trade [Streetwise Maps, Inc. v. Ryan Gibson, D2010-0984 (WIPO August 6, 2010)] and offers goods or services in different classes [G DATA Software AG v. Geologic Data Systems, D2010-0389 (WIPO May 10, 2010)], it has a right or legitimate interest in the domain name.
Where the trademark is a descriptive phrase “it is necessary for Complainant, in support of its prima facie case, to establish that this trademark has taken on a secondary meaning, denoting goods or services of a particular trader,” Simple Truths, LLC v. Edward Slack, Simple Truth Publishing, D2010-1349 (WIPO September 20, 2010), citing Porto Chico Stores, Inc. v. Otavio Zambon, D2000-1270 (WIPO November 15, 2000). The disputed domain names, <simpletruthpublishing.com> and <simpletruthpublish.net> are confusingly similar to SIMPLE TRUTHS.
Absent an explanation from the Simple Truths Respondent the domain names could be seen as instances of typosquatting (omission of “s”). However, arguing that a respondent is an infringer for having registered a domain name confusingly similar to a descriptive trademark necessarily requires a threshold analysis of the parties’ locations, their products or services and the respondent’s motivation. While on the highest level of abstraction the respondent may be said to deal in a product or provide a service there necessarily has to be a high degree of propinquity coupled with knowledge and targeting for infringement, which was not present in Simple Truths.
Although in Simple Truths the parties are associated with publishing they each occupy a separate niche. “The broad and generic nature of this trademarked term” (the Panel noted) “is evident by the disparity between the offerings on Complainant’s and Respondent’s respective websites, though both can aptly be described as pertaining to ‘Simple Truths’.” The more interesting issue in Simple Truths is that while the .net domain name was registered before service of a cease and desist letter the .com was after. It would not be unreasonable to infer opportunism in the .com registration, except that the Respondent’s history and the content of his website supports an innocence intention.
Paragraph 4(c)(i) of the Policy is a complete defense if before any notice of the dispute the respondent is using the domain name in connection with a bona fide offering of goods or services. This is reinforced where the respondent has commonly been known by the domain name [paragraph 4(c)(ii)]. Since extensions are simply functional elements, a respondent’s good faith prior use of the TLD “can be applied to the ‘.com’ domain name,” Simple Truths. The reason for this is that “[b]oth disputed domain names recite the full name of Respondent’s corporation, established for the bona fide offering of goods (i.e. his book) and one of these virtually identical domain names was registered before the notice of the dispute.” Thus, registering a TLD in a different extension (where the respondent has already an established right or legitimate interest) will not undercut the respondent’s good faith. If the respondent has established a right or legitimate interest there can be no “bad faith” regardless that one of the extensions is registered after notice of the dispute.