Confusion appears twice in the Policy: “confusing similarity” in paragraph 4(a)(i) and “likelihood of confusion” in paragraph 4(b)(iv). A domain name may be similar and confusing from the standpoint of an ordinary observer, but that is only relevant for standing. However, the higher probability that there is a likelihood of confusion may never be reached because when the respondent is found to have a right or legitimate interest in the domain name it follows that it registered the domain name in good faith. This can come about because the trademark and domain name are both descriptive of the parties’ services. Austin Area Birthing Center, Inc. v. CentreVida Birth and Wellness Center c/o Faith Beltz and Family-Centered Midwifery c/o June Lamphier, FA0911001295573 (Nat. Arb. Forum January 20, 2010) in which both parties are in the same business.
There is no prohibition against registering a domain name that describes the Respondent’s business, even if the similarity in identifying itself is confusing. This was seen also in Kim Laube & Company Inc. v. RareNames, WebReg, FA0910001291282 (Nat. Arb. Forum December 22, 2009) (<natureschoice.com> and <natures-choice.com>), despite NATURE’S CHOICE being a registered trademark. To “become distinctive as an indication of a single source [it must] not [be] simply viewed by the public as a description applicable to the goods or services from various sources,” Lincolns of Distinction Car Club, Inc. v. Joseph Detomaso, FA 538014 (Nat. Arb. Forum September 24, 2005).
The Complainant in Austin Area Birthing argued that it had an unregistered trademark in AUSTIN AREA BIRTHING CENTER and that the Respondent’s <austinbirthcenter.com> was piggybacking on its reputation. However, “[a]s the Respondent correctly asserts, the disputed domain names contain descriptive terms regarding its midwifery and birth center services in the Austin geographical area. These are perfectly legitimate business activities. Consequently, the Panel finds that the Respondent and the registrant of the second domain name are using the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i).” It is not uncommon that multiple purveyors of goods and services choose a descriptive phrase – generally not even registrable as a trademark – to represent themselves to the public.
However, the Policy was not intended to give to the first in the marketplace the power to prevent competitors from describing their services in language similar to the complainant’s trademark. “It must not be forgotten that domain name registration is basically a ‘first come, first served’ process and that the purpose of the Policy is not to adjudicate between parties who have some legitimate interest in using a particular domain name.” A frequently cited federal case, Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) holds that “[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.”
In Austin Area Birthing, the Respondent submitted sufficient evidence to prove that she had a meritorious defense under paragraph 4(c)(i) of the Policy. In so far as creating a full record, it is the obverse of the facts in Fashion Career Center, LLC v. Resume Pro Writers Guild c/o Michael Hunt and Mercado, FA0912001296574 (Nat. Arb. Forum January 20, 2010) which will be discussed in tomorrow’s Note.