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Domain Names Similar to Trademarks But Not Confusing

See Anthology of Commentaries — 2014

The test for establishing confusing similarity is relatively modest. Less or more so is not easy to measure. For this reason, Panels tend to give complainant the benefit of the doubt, but low though the bar is set it is not satisfied by simply showing that the trademark and the domain name bear a similarity of parts, unless the part which is the trademark or an element of it suggests the whole. The similarity must (in the words of one Panelist disagreeing with the majority who found in Complainant’s favor on that element) be confusing to an “objective bystander,” Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010). Generally speaking, however, because of the low bar it is more usual than not for the Panel to find confusingly similarity and reject the argument for abusive registration.

Whether the domain name is “confusingly similar” or simply similar to the trademark but not confusing to the objective bystander focuses on differences in the composition of the string of letters, words or numbers. Affixes generally do not create a distinctive name – a geographic identifier for example added to a well-known trademark is no more than the well-known trademark with a geographic identifier – but added or substituted letters or numbers to a trademark can create an entirely distinctive name, bet365 Group Limited v. Domains by Proxy, Inc. / Steve Prime, D2011-1242 (WIPO September 14, 2011) (trademark: 365BET; and domain names: <>, <>, <>, substituting “casino,” “poker” and “wager” for part of the trademark “bet.” , or phrases a new meaning, Medimmune, Inc. v. Jason Tate, D2006-0159 (WIPO April 14, 2006) (adding to the trademark SYNAGIS the phrases “isbadforyou” and “isnotsafe”). In bet365, the Panel ordered transferred only <> which contains the whole of the trademark plus a second string of numbers prefixing the trademark repeating the number of days in the year.

The Complainant in bet365 argued that the string of numbers alone together with words connoting wagering are likely to mislead Internet users into believing there is a real connection between the domain names and the Complainant or its services. The Panel rejected this contention. Rather,

First, “bet” and “365” are both common, every day expressions in the English language. The evidence shows that the Complainant has relevant trademark rights in them in combination, but there is nothing in the evidence which would suggest that the Complainant has any rights in respect of the element “365” on its own. Furthermore, the words “casino” and “poker” are not synonyms for the word “bet” in the English language, and they do not convey the same impression. One may “bet”, or place a “bet”, without going near a casino or playing poker. The fact that those words are terms which may be used in the Complainant’s field of business does not, in the Panel’s view, make them confusingly similar to the word “bet”.

As between “bet” and “365″ neither is dominant for the reason that both are common. It is only wedded that they qualify for trademark status: “[t]he word ‘Bet’ is an integral part of the Complainant’s trademarks, and in the Panel’s view Internet users who are aware of the Complainant are unlikely to know it as anything other than ‘Bet 365′, with the ‘Bet’ included.” The same result was reached by a different Panel involving a different Respondent a few days later, bet365 Group Limited v. Domains By Proxy, Inc. / eli dabosh, D2011-1297 (WIPO September 19, 2011) ().

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