Ordinarily, “the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity,” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.2; A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, D2001-0900 (WIPO September 19, 2001). The Panel in RapidShare AG and Christian Schmid v. majeed randi, D2010-1089 (WIPO September 2, 2010) suggests that there may be cases (and RapidShare is one of them) that justify examining the website to resolve uncertainty on the issue of confusing similarity.
The Panel’s reasoning in RapidShare is as follows:
[S]ignificantly at least one of [Complainant’s] marks … appears to cover [file sharing services]…. “Piracy” is a term that has long been associated with the unlawful making or sharing on the Internet of copyright protected content…. [I]t is not fanciful to suggest the term “rapidpiracy” can be read as involving a conceptual allusion to the Complainants’ mark (perhaps suggesting an illegal version of the Complainants’ services).
The question is whether <rapidpiracy.com> is confusingly similar to RAPID SHARE. The Panel found that it is, but not on a straight comparison. The Panel needed help from the website
In this Panel’s assessment, when considering whether the Domain Name should be read in that way, another important factor in this case is the content of the Respondent’s website. In particular, there is the fact that on the front page of that site there were at least three direct references to the First Complainant by name. In short, an obvious inference from this content is that the Respondent intended the Domain Name to be understood as alluding to the Complainants’ mark.
Assessment of “confusing similarity” has been held to be governed by an objective standard rather than the Respondent’s subjective intent. Nevertheless (and necessarily is the rarest of cases), “that does not mean that in an appropriate case evidence of what a Respondent’s subjectively intended cannot be evidence of how the mark is objectively understood.”
The objective standard is quite simple. “Rather than performing a detailed analysis of the totality of the circumstances in the relevant markets, a trier of fact need merely perform a lexical or alphabetic comparison of the domain name and the trademark in question,” Smoky Mountain Knife Works v. Carpenter, AF-230ab (eResolution July 3, 2000). The Policy is not focused on the narrow question of “whether the domain name causes confusion as to source,” Wal-Mart Stores, Inc., D2000-0662 (WIPO September 19, 2000).
The Panel in RapidShare was clearly uncomfortable with finding that the domain name was not confusingly similar to the trademark because on examining the website it appeared to him that the Respondent had registered and was using the domain name in bad faith. I noted in prior posts that the term abusive registration subsumes abusive conduct. The Panel’s decision to look at the website to justify his finding of confusing similarity cuts across the grain. It bears relation to the post hoc ergo propter hoc fallacy that prior panelists have consistentlly rejected as the proper standard under UDRP, the low bar for jurisdiction notwithstanding. Compare RapidShare AG and Christian Schmid v. Protected Domain Services Customer ID: NCR-785723/ n/a Sergey Vlasov, D2010-1106 (WIPO August 27, 2010) (<rapid4me.com>; “There is … no evidence that the Complainant’s brand or the Complainant are commonly abbreviated or known by the name ‘Rapid’. The Panel cannot therefore disregard the ‘share’ element of the trademark for the purposes of this comparison.”)