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Confusingly Similar and Similar But Not Confusing

There are domain names though similar are not necessarily confusingly similar. They sit on the borderline, and not surprisingly their status may be viewed differently by different panelists. In the same way that a an original registrant is regarded differently from an assignee (the good faith of one is not heritable by the other for example), so there may be a question whether a domain name that is similar but not confusing in one context becomes confusingly similar in another. The Panel in Netflix Inc. v. Anthony Fox, FA0909001287043 (Nat. Arb. Forum November 2, 2009) finds no confusing similarity between NETFLIX and <>, but instead of stopping his analysis and simply dismissing the complaint (which one would expect when a complainant fails to prove jurisdiction) he “elects to consider the remaining two elements of the Policy” (although Why is unclear) but doing so finds the Respondent to have a legitimate interest and registered the domain name in good faith. Therefore, even if he had found the domain name confusingly similar instead of the other way around, this particular Respondent, the original registrant of <> had a good defense. However, it is not clear whether the absence of an “f” would help the assignee where (based on the use of the domain name) the composition of the domain name held by an assignee may appear to be a case of typosquatting.

In concluding that there was no confusing similarity between NETFLIX and <> the Panel cites LLC v. Electronic Marketing Systems, Inc., FA0308000187636 (Nat. Arb. Forum October 13, 2003) in which that Panel (who also analyzed further than necessary) found that although there was no confusing similarity between ILEADS and <> and while the Respondent had a legitimate interest in the generic “leads” it nevertheless registered the domain name in bad faith. Does that mean, If there had been confusing similarity the Respondent’s legitimate interest would nevertheless have trumped bad faith? Dictum, very confusing, but the twists and turns are fascinating.

However, there is a classification difference between a NETFLIX and a ILEADS. One is arbitrary (and registered), the other generic (and not registered). But, what if the respondent is not the original registrant and the assignee uses the domain name in bad faith? There are decisions that attempt to answer this question. In Certipost NV v. Virtual Point Inc., D2008-1183 (WIPO September 25, 2008), for example, the registrant was a different entity than the respondent and even though owned by the same principal in a different business capacity the Panel held that the respondent was an assignee. “[T]he Panel sees no injustice in the ‘internal’ transfer of the Domain Name within the wider business group, producing the ‘side effect’ of giving the third party trade mark owner who has been subjected to the bad faith use, an opportunity to invoke the Policy which it would not otherwise have had (because it could not show that the original registration of the disputed domain name had been made in bad faith).” Of course in Certipost, the Panel found that CERTIPOST (an invented word like Netflix) and <> were confusingly similar.

Similarity between a domain name and parts of a trade mark inherently generic or descriptive are not legally confusing. Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO September 11, 2000) (CLUB 18-30 and <>). Sharing three quarters of the phrase – “and grow rich” – is not enough, Napoleon Hill Foundation v. pmweb, FA0907001275894 (Nat. Arb. Forum September 28, 2009) THINK AND GROW RICH and <>. “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 suggest real estate transactions, while the phrase ‘flip and get rich’ suggests ‘flipping’ read estate to get rich.” Although the Panel in, Inc. v. Nett Corp., FA0908001280020 (Nat. Arb. Forum November 10, 2009) denied the complaint against <> the dissent would have gone further and dismissed on the grounds that the domain name is not confusingly similar to STREETPRICES. A trademark holder can claim no more than it has been granted, but the Netflix/Netlix type of case can take on a different colortion in the hands of an assignee, particularly where the trademark has risen to a higher level of recognition in the marketplace.

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