Panels use the phrase “initial interest confusion” in two contexts: “[1] confusion of authorship upon reading the content of a website and [2] confusion of an Internet user who is seeking the mark owner’s website but is attracted to the alternative website by its similarity (in this case, identity) with a recognized mark,” Justice for Children v. R neetso / Robert W. O’Steen, D2004-0175 (WIPO June 4, 2004). The term derives from US trademark case law, although as noted in a recent decision in the High Court of Justice, Chancery Division (citing cases from most of the Circuit Courts of Appeal) , OCH-Ziff Management Europe Limited v. OCH Capital LLP, [2010] EWHC 2599 (Ch) it “remains both controversial in some quarters and uncertain as to its application and scope even where it is accepted.” Nevertheless, it has increasingly become accepted.

The concept or doctrine (as it is termed) was severely criticized by the dissent in Aspis Liv Försäkrings AB v. Neon Network, LLC., D2008-0387 (WIPO June 2, 2008) (<aspis.com>). He complained that a “small group of recent domain name cases [were improperly based] on a judicially invented legal concept that arose in the early 2000’s.” “This concept” (he stated) “is a classic case of judicial activism where a Panel or Court is attempting to adopt some new and beneficial equitable principle that it considers ‘fair and reasonable’, in spite of the fact there is no legal basis or practical reason for such a conclusion.” The Panel in Justice for Children case continued that the content of the website is “irrelevant to the harm to the mark owner and to the unwary consumer.” What is relevant is that “harm results from the confusion caused by the initial attraction to the site by means of borrowing the complainant’s mark. And that is exactly the harm the Policy was adopted to address.” The definition of the doctrine is succinctly noted in the resolution adopted by the International Trade Mark Association on 18 September 2006 which states that it “allows for a finding of liability where a plaintiff can demonstrate that a consumer was confused by a defendant’s conduct at the time of interest in a product or service, even if that initial confusion is corrected by the time of purchase.”

In UDRP jurisprudence the doctrine has had a long history of application. In AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum October 31, 2000) the Panel held that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer.” A similar holding was made in Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution October 23, 2000), namely that liability attaches despite a disclaimer on the website and link to the complainant’s website on the respondent’s website.

More recently, the concept was applied in Rockwell Automation, Inc. v. Jose Hernandez, FA1004001316859 (Nat. Arb. Forum May 20, 2010) (<allenbradleyproducts.com>). Respondent’s only evidence for both legitimate interest in the domain name and bad faith registration is that it placed a disclaimer on his website which he claims supports both. The Panel disagreed:

Although there is a dispute as to whether the disclaimer actually appears on Respondent’s website [or appeared prior to the commencement of the proceedings], such a disclaimer, even if present, does not mitigate initial interest confusion and for this reason does not confer upon Respondent any right or legitimate interest in the Domain Name.

Similarly in resolving the issue of bad faith: “[i]ndeed, it is fair to infer, and the Panel finds that [the Respondent] selected that name because, on account of its notoriety for automated control equipment, it would attract persons interested in buying such equipment to his website, which was his objective.” Initial interest confusion can be seen as the flip side of nominative fair use.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com