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Demonstrating that Term Bracketed in Domain Name is Complainant’s Trademark

Domain names composed of a number of words that may include one identical to a trademark is not ipso facto confusingly similar to it. Low though the bar is, the complainant has still to prove confusing similarity where the domain name builds on a term and the composite plausibly attracts Internet users looking for a website unrelated to the complainant. This point is brought into focus in Doctor’s Associates Inc. v. Atomix, D2010-0060 (WIPO April 6, 2000) involving <>. The Complainant is the trademark holder of SUBWAY. It has no trademark for “My Subway Rewards” or “Subway Rewards.” A “trademark owner does not necessarily ‘own’ all combinations of marks using its principal word,” Scholastic Inc. v. and Ramit Sethi, D2001-0946 (WIPO November 4, 2001) (<>).

Representation by counsel is no assurance that a submission satisfies a party’s burden of proof. In Doctor’s Associates counsel evidently assumed that no more was necessary than to point out inclusion of the trademark in the domain name. The moral of the story is that a complainant has at the least to make a showing that the accompanying word(s) notwithstanding the composite is confusingly similar to its trademark. However, where the shared term “is bracketed between other words which could quite conceivably be used in combination to convey a meaning unassociated with the SUBWAY mark per se,” Id, “it is insufficient simply to demonstrate rights in a word that forms a part of a domain name.”

There is a distinction to be made between those compositions of words in which “the distinctive nature of a trademark [that is] wholly subsumed within a domain name nevertheless makes the domain name, confusingly similar to the mark under the Policy” and those that create a separate identity. It does not “inevitably follow[] from the fact that a domain name incorporates a trademark in its entirety that a domain name must be confusingly similar to that mark,” citing Research in Motion Limited v. One Star Global LLC, D2009-0227 (WIPO April 9, 2009), in which the panel observed that “[e]ach case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.”

Where it cannot be said with certitude that the comparison of the domain name and the trademark yields confusing similarity then the complainant must do more than assume that its market penetration is sufficient. The domain name in Research in Motion is an excellent example of certitude. There is no ambiguity that in registering <> the Respondent was targeting the Complainant’s trademark. The word “blackberry” is used in its trademark sense; not in its generic, as a fruit. Because that is not clear with <> the Complainant has to show how in this specific case the bracketed words are aligned in the public’s mind with the trademark. In rejecting confusing similarity, the Panel is drawing fine (and some may say very fine) distinctions. Both BLACKBERRY and SUBMARINE are well known trademarks, but the bracketed words in the former give prominence to the trademark, which is not the case in the latter.

Gerald M. Levine <>

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