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What Standards for Confusing Similarity?

In assessing whether a domain name is confusingly similar to the complainant’s trademark the analytical procedure is to make a side by side comparison of the two. The “www” prefix and the “gTLD” are disregarded as functional elements. The focus is solely on the second level domain (SLD). As a general rule if the SLD contains the trademark in whole it is confusingly similar to the trademark. This assessment does not foretell the complainant’s right to capture the domain name; it is a jurisdictional ruling which simply determines whether the complainant has standing to maintain the proceeding. The alternative is to dismiss the complaint notwithstanding the domain name incorporates the complainant’s trademark. This latter procedure appears to make sense when the domain name that incorporates the trademark resolves to a website whose content is protected speech under paragraph 4(c)(iii) of the Policy. A recent example is Twentieth Century Fox Film Corporation v. DISH Network LLC, FA1010001350483 (Nat. Arb. Forum November 22, 2010) (a decision made over dissent) in which the Respondent incorporated commercial, disputatious and sloganeering commentary in the disputed domain names [<>, <>, <>, and <>].

The question is, Is it appropriate to employ the latter procedure for domain names incorporating trademarks that are commercial in nature, rather than “noncommercial and fair use”? The purpose of such domains being registered is (unabashedly) to create income streams. The latest case on this point is Hoffmann-La Roche Inc. v. Mikhail Pavlishin, D2010-0998 (WIPO December 3, 2010) which despite its case number has only just been reported [Hoffmann-La Roche(2)]. The Panel dismissed the complaint on <>; the Respondent defaulted in appearance. The Panel noted that she was aware “of a substantial line of cases in which panels appear to have effectively applied this principle [that is, incorporating in full the trademark] under the first element of the Policy as a per se rule.” She continued: “Notably, one panel recently ruled that the domain name <> is confusingly similar to the mark ACCUTANE. Hoffmann-La Roche Inc. v. Michail Sidorenko, WIPO Case No. D2010-0581[Hoffman-La Roche(2)].”

So what we have are two panelists with different views (one I think correct) about the proper analytical procedure involving the same Complainant and the identical SLD. This is not a good advertisement for consistency of jurisprudence and predictability in the resolution of disputes. ICANN panelists early recognized that UDRP should not be a roulette wheel; that they should aim for a high degree of consistency (the achievement of which is the basis for predictability). The goal is achieved through “a strong body of precedent” which “is strongly persuasive” even if not binding, Pantaloon Retail India Limited v. RareNames, WebReg, D2010-0587 (WIPO June 21, 2010).

The “precedent” ignored by Hoffmann-La Roche (2) is compelling. She flatly states that she “does not agree with the approach” of a significant body of precedent reaching back to the beginning of UDRP. She cites half a dozen cases with which she “disagrees” and there are dozens of other cases cited in those cases for the proposition that incorporation of a trademark in whole supports confusing similarity. The reason for the “disagreement”, however, is unpersuasive (at least to this reader), and that is “it effectively transforms a general principle into a mechanistic rule severed from the general principle’s underlying logic.” This “logic” does not make sense (at least for domain name created for commercial gain) when the reason for the analytical procedure is simply to determine whether the Complainant has standing to maintain the proceeding. For claims within the Policy’s jurisdiction past Panels have emphasized that decisions “should consist of more than, ‘It depends [on] what panelist you draw’,” Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001) (<>). Hoffman-La Roche(2) drew the wrong panelist!

Levine Samuel, LLP <>

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