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Domain Names Similar But Not Confusingly Similar to Trademarks in Determining Threshold Issue

That respondents can avoid the ultimate penalty of forfeiture with a trademark plus negative or disputatious terms is well established as a defense under paragraph 4(c)(iii) of the Policy. There is another class of domain names incorporating trademarks or their dominant features that although similar in part are not confusingly similar so as to sustain an actionable claim. This is when the lexical elements “eliminate the possibility of confusion,” Morgan Stanley and Morgan Stanley Smith Barney Holdings LLC v. EnviroCitizen, LLC., FA1008001342402 (Nat. Art. Forum November 26, 2010). In the case of Morgan Stanley the added part is “screwed by” to form <>. This is a name (to quote from another case) “which, by its very nature, declares” its hostility to the complainant, America Online, Inc. V. Johuathan Investments, Inc. &, D2001-0918 (WIPO September 14, 2001)(<fucknetscape>). “Screwed by” and “fuck[tradmark]” “clearly indicat[e] that the domain name is not affiliated with the trademark owner.”

Even though the possibility of confusion is eliminated, which supports finding no confusing similarity, two approaches have developed: terminating the proceedings forthwith and noting complainant’s failure of prove its trademark right while remarking on the evidence as to the second and third elements. With respect to the first approach, if the complainant fails to prove the threshold element it should be conclusive regardless whether the content of the website is protected speech under paragraph 4(c)(iii) of the Policy. The second approach is suggested in Medimmune, Inc. v. Jason Tate, D2006-0159 (WIPO April 14, 2006). The Panel found that Respondent’s “site does not even seem to carry any genuine message at all.” He concluded that these “[s]o-called ‘sham speech’ domain names [are] selected not for any genuine purpose of providing critical commentary about a product or company but rather solely for the purpose of avoiding transfer under the Policy while accomplishing some unrelated business purpose (e.g. obtaining click-through revenue).” Nevertheless, the phrases “bad for you” and “not safe” added to SYNAGIS are instantly clear of their purpose and that finding is conclusive of the issue of confusing similarity.

While domain names instantly clear of their purpose or “by its very nature [hostile]” should conclude the issue of confusing similarity it can nevertheless shelter respondents who have “no genuine purpose of providing critical commentary.” Pure as opposed to sham speech is properly protected. Paragraph 172 of the WIPO Final Report states that “Domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial consideration … [are] … not [] considered to be abusive.” But, sham speech creates an opportunity for commercial gain for which, the Mediumme Panel suggests, is not actionable. There have been exceptions to the rule that added terms, negative or otherwise, eliminate the possibility of confusion. In Baylor Univ. v. Sysadmin Admin, FA 1153718 (Nat. Arb. Forum Apr. 11, 2008) for example the Panel found that <ihatebaylor> was confusingly similar to the BAYLOR mark. But, the consensus appears to support terminating the proceeding regardless whether the speech is sham. For example, the additions in Citigroup, Inc. v. Allman, FA 1066738 (Nat. Arb. Forum October 16, 2007) adding “rip-off” (<>) and the Royal Bank of Scotland Group plc v., D2001-0212 (WIPO June 18, 2001) adding “fraud” (<>) were of the hostile kind, thus no purpose for pursuing the assessment further.

In contrast to Morgan Stanley and Medimmune and consistent with America Online, Citigroup and Royal Bank of Scotland, the majority in Twentieth Century Fox Film Corporation v. DISH Network LLC, FA1010001350483 (Nat. Arb. Forum November 22, 2010) which is discussed in the November 26 Note voted to terminate the proceeding after concluding that <>, <>, <>, and <> were not confusingly similar to the Complainant’s trademark.

Levine Samuel, LLP <>

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