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Not All Similarity is Confusing

Judged objectively not all similarity is confusing with domain names and trademarks. Paragraph 4(a)(i) of the Policy is not satisfied by simply showing that the trademark and the domain name bear a similarity of parts, unless it suggests the whole. The similarity must be confusing to an “objective bystander,” so stated by the minority Panel in Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010) (concurring in the ultimate holding denying the complaint but dissenting on the 4(a)(i) finding in the Complainant’s favor). How to draw the line between names that are confusingly similar and those that are simply similar but not confusing seems to be in the same category as holding water. It is easier for the Panel to pass the complainant on the threshold test and deny the complaint for failure to prove bad faith. But, some panelists scratch to relieve the itch. The 3-member Panel in Tire Discounters, Inc. v., FA0604000679485 (Nat. Arb. Forum June 14, 2006) ruling on TIRE DISCOUNTERS to form <tirediscounter> held that the “omission of the letter ‘s’ from the mark is one of those small differences that matters.” See the “Small Differences” Note of August 24. The “small differences” approach is a start that works with some combinations and not others.

The dissent in Open Society Institute builds a more nuanced approach to confusing similarity based on a whisper made in a case decided in the first months of UDRP, SportSoft Golf, Inc. v. Sites to Behold Ltd., FA0006000094976 (Nat. Arb. Forum July 27, 2000). In SportSoft, the “trademark [GOLF SOCIETY OF THE U.S.] links together two generic words – golf and society with a geographic entity, the United States. The disputed domain name incorporates the two generic terms golf and society with an upper level domain” Generalizing the particular is similar only in incorporating the same generic terms but the “objective bystander” is unlikely to confuse the two.

In Open Society also the trademark “links together two generic words.” The “sole question … is whether the domain name <> is confusingly similar to the trademark OPEN SOCIETY INSTITUTE.” Is there enough of a similarity to confuse the “objective bystander” of a relationship with the trademark holder? The majority said Yes. The minority scratches. “The test to be applied” (he observes) “has two parts” and continues

The first part is to ask if the domain name is similar to the trademark. In this case it is similar, for the domain name is made up of two of the three words of the trademark. The second part of the test is whether the similarity is confusingly so. This part of the test is satisfied by asking the further question if the Panel can conclude that an objective bystander, comparing the domain name and the trademark, would reasonably conclude that the “open society” of the domain name was referring to the OPEN SOCIETY INSTITUTE of the trademark and by that means giving rise to confusion between the two.

If omission of “institute” is one of those “small differences” only because it is said to be, that is not good enough. “The real obstacle in the way of finding that an objective bystander would reach that conclusion is that the domain name is referring to a concept or a notion, whereas the trademark is referring to an entity or, more precisely, an institute and one institute in particular.” That is a significant advance over “small differences” by emphasizing a distinction between “a concept or a notion” and the actual name of the legal entity. “An objective bystander is therefore unlikely to think that the domain name was referring to the Complainant’s institute or to any institute at all and unlikely to be confused into thinking that the one necessarily referred to the other.” It is more likely that “the concept or notion invoked by the domain name” will be taken to mean “the idea of a society that is not closed or secretive, but open and committed to imparting information, in part by means of freedom of information legislation.”

The objective or nuanced view of the rights or legitimate interests and bad faith requirements is that similarity based on a combination of generic terms (even if confusing) is not sufficient to deny good faith registration, and even if paragraph 4(a)(ii) is made out lack of any right or legitimate interest is insufficient for a finding of abusive registration.

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