Panels
may accept unregistered marks as basis for Complainant's rights in a
mark, although the level and type of proof varies.
Comments:
Panelists
from non-common law systems may require registration of the mark in
order to establish rights in the mark.
Reporter's
Notes:
Common
law trademarks have been held by to represent sufficient 'rights' to
have standing under the UDRP. See WIPO/D2000-0050
(noting that the Policy 'does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names' and applying the Policy to 'unregistered
trademarks and service marks'); NAF/FA97044
(finding that the Uniform Domain Name Dispute Resolution Policy does
not require 'that a trademark be registered by a governmental authority
for such rights to exist').
Continuous
Use - Panel found that the Policy is broad enough to encompass rights
in unregistered trademarks or service marks, citing McCarthy on
Trademarks and Unfair Competition, 25:74.2, Vol. 4 (2000); thus
Complainant's proof of continuous use of the mark in relation to the
sale and marketing of its products was sufficient to create rights in
the mark even though it was not registered: NAF/FA135597
(armorcrafts.com). [Numerous decisions cite this section of McCarthy].
Complainant established sufficient rights in its common law mark
through continuous use: WIPO/D2002-0912
(sammysgirls.com).
Secondary
Meaning - Complainant must show that the unregistered mark has achieved
secondary meaning or association with Complainant: WIPO/D2002-0786
(austrade.com); WIPO/D2002-0726
(galatasaray.com).
Generic
terms can never function as trademarks, and no amount of secondary
meaning can convert a generic term into a trademark: WIPO/D2000-0439
(finding SHOPPING.COM to be generic despite proof of extensive
advertising and marketing efforts and thus holding that Complainant did
not have rights in the alleged mark); WIPO/D2000-0463
(finding FREEPRESSCLASSIFIED.COM to be generic).
The
Panel suggested that the following factors might be helpful in proving
rights where the mark is not registered: prominent usage of the
designations on the respective webpages; evidence of the use of the
designations in other hard copy publications so as to indicate that the
goods or services referred to in these publications are provided under
that designation; evidence of the use of these designations on specific
goods provided by the Complainant; evidence of the volume and extent of
such uses: WIPO/D2002-0981
(uwec.com, uwec.org, uwosh.com, uwplatt.com, uwrf.com, uwsp.com,
uwsp.org, and uwsuper.com).
If the
Complainant can show that its common law mark has become distinctive
through use in any country, it will be accepted that it has rights to
satisfy the first requirement in these proceedings: WIPO/D2002-0815
(quakeaid.com).
See
also: WIPO/D2000-0754
(finding two of three claimed marks not proven to be common law marks
based on the materials submitted); WIPO/D2002-0143
(charterfleet.com and charterfleetinternational.com - finding
Complainant had no protectable rights in the generic Charter Fleet but
had rights in Charter Fleet International - although it was merely a
descriptive mark, continuous use for 5 years had made it sufficiently
distinctive).
Section 2.1.2.2 - Celebrity Names
Panels
generally find rights in the names of well-known individuals and
celebrities, based on having trademarked the name or through common law
trademark protection.
Comment:
The
Report of the Second WIPO Internet Domain Name Process (September 3,
2001) specifically addressed personal/celebrity names. It states, "The
UDRP does not require that a Complainant must hold rights specifically
in a registered trademark or service mark. Instead, it provides only
that there must be 'a trademark or service mark in which the
Complainant has rights,' without specifying how these rights are
acquired": WIPO, Second
Process Report, para. 182.
While
prior decisions sometimes relied solely on the fame of the celebrity,
more recent Panels, citing the Second Process Report, require proof
that the name has been used to identify the celebrity's products or
services.
Reporter's
Notes:
Cases
where a well-known individual had registered their name as a trademark:
WIPO/D2000-0060
(dodialfayed.com, name registered as a Community Trade Mark); NAF/FA94866
(anngeddes.com, misspelling of Anne Geddes, registered trademarks); NAF/FA94644
(kasparov.com, one trademark registration for name); NAF/FA94373
(emeril.com, several trademark registrations); NAF/FA95063
(yanni.com, ''international musical superstar''); WIPO/D2000-0364
(jimihendrix.com, internationally known musician).
"To
establish common law rights in a personal name, it is necessary to show
use of that name as an indication of the source of goods or services
supplied in trade or commerce and that, as a result of such use, the
name has become distinctive of that source. Upon such proof, a
celebrity's name can serve as a trademark when used to identify the
celebrity's performance services": WIPO/D2002-0872
(michaelcrichton.com - finding that Complainant had, through use,
acquired common law trademark rights in his name).
Cases
where Panels found that individuals have trademark rights even where
their names are not registered as trademarks: NAF/FA97112
(stephanieseymour.com, ''her fame as a supermodel and actress evidences
a reputation worthy of protection under common law trademark laws''); NAF/FA95465
(karlalbrecht.com, author of books and articles on business and
marketing); WIPO/D2000-0402
(stevenrattner.com, high profile investment banker); WIPO/D2000-0235
(jeanettewinterston.com,.net and.org, well-known British author); WIPO/D2000-0229
(choyoungpil.com, famous Korean pop music artist); WIPO/D2000-0210
(juliaroberts.com, famous American actress); NAF/FA95261
(mickjagger.com, famous American singer); NAF/FA95110
(brittanyandrews.com, "internationally known actress, model, public
speaker, and feature entertainer'"); DEC/AF-303
(annemclellan.com, annemclellan.org, senior Canadian government
official).
But
See:
Panel ruled that famous performer Sting did not necessarily have rights
in STING "as a trademark or service mark" because the personal name
Sting was "also a common word in the English language, with a number of
different meanings." WIPO/D2000-0596
(sting.com).
Panel
majority refused to transfer brucespringsteen.com to recording artist
Bruce Springsteen. The Panel reasoned that Internet users would know
that the site was not an official/authorized site and that Respondent
used the domain name in connection with a bona fide offering of goods
and services. The Panel found that Respondent did not register the
domain name to prevent the trademark owner from using the mark in a
domain name. Since Complainant had registered brucespringsteen.net as
his official web site, the Panel found that Respondent did not prevent
Complainant from using its mark in a domain name. The Panel also
criticized other celebrity name cases. It felt that Panels fail to
grasp that "users of the Internet do not expect all sites bearing the
name of celebrities or famous historical figures or politicians, to be
authorised or in some way connected with the figure themselves." WIPO/D2000-1532
(brucespringsteen.com).
Section
2.1.2.3 - Other Personal Names
Panels
are less likely to transfer the domain where the domain is a personal
name that is not well-known, absent evidence that the name was used
commercially and had acquired secondary meaning.
Comment:
As
stated in the comments in the previous section, WIPO carefully
considered to what degree protection should be extended to personal
names, in its Final Report on the Second WIPO Domain Name Process,
dated September 3, 2001. In its recommendations, WIPO clearly indicated
that the Policy should be limited to personal names that had been used
commercially.
Reporter's
Notes:
"A
mark comprising a personal name has acquired secondary meaning if a
substantial segment of the public understand the designation, when used
in connection with services or a business, not as a personal name, but
as referring to a particular source or organization." Since the
Complainant did not prove that the name met this criteria, the Panel
declined to find rights in the alleged mark: WIPO/D2001-0540
(izzyaser.com, izzyasper.net, izzyasper.org). [This case has a great
summary of personal and celebrity name cases].
Panel
found that Complainant held a common law mark in his name in connection
with horse training: WIPO/D2000-0299
(montyroberts.net).
Panel
denied to transfer the domain marvinlundy.com to Marvin Lundy. Lundy
claimed his named was distinctive and that he was a well-known attorney
in Philadelphia (Respondent is also from Philadelphia). "It is a basic
rule of service mark law in the United States that personal names
(combining a first name and surname) are not considered inherently
distinctive. In order to establish common law service mark rights in a
personal name, it is necessary to show that the name has acquired
secondary meaning among consumers in the relevant market; that is, to
show that consumers associate the name with a specific provider of
services." "Complainant has provided no information or materials that
support its assertion, such as published news reports, survey
responses, evidence of advertising, or other materials that might
establish at least a prima facie case in support of its assertion." WIPO/D2001-1327.
Section
2.1.2.4 - Trade Names
A
trade name will satisfy 4(a)(i) if it is registered as a trademark and
might satisfy 4(a)(i) if it qualifies as a common law mark.
Comments:
Panels
are divided as to whether trade names qualify as a mark under 4(a)(i).
Reporter's
Notes:
Complainant
failed to prove that it had rights in its trade name because it did not
present evidence of secondary source identification or extensive use of
the name in relation to the specified product; mere incorporation is
insufficient: NAF/FA137713
(portlandbolt.com).
Complainant
had rights in its trade name due to continuous and exclusive use since
the 1970s: WIPO/D2002-0912
(sammysgirls.com).
But
see:
Complainant's
trade name was not sufficient because Complainant had not registered it
or even proven common law rights in the name. "The reports and
descriptions of the purpose of the UDRP make clear that these rules are
intended only to protect trademarks, registered or common law, and not
mere trade names, due to the fact that trade names are not universally
protected as are trademarks": NAF/FA118308
(diversifiedmorgage.com).
No
reference is made in the Policy and Rules to trade names in which a
Complainant has rights: WIPO/D2000-0025
(sgs.net and sgsgroup.net).
Section
2.1.2.5 - Geographical Names
A
geographical name will satisfy 4(a)(i) if it is registered as a
trademark and might satisfy 4(a)(i) if it performs functions similar to
a registered trademark.
Reporter's
Notes:
Registered
Marks:
Although
WIPO/D2000-0505
(barcelona.com) and WIPO/D2000-0617
(stmoritz.com); both of which concerned registered trademarks, came out
differently in the end, the Panels in both instances found that because
the geographic names were registered trademarks, Complainants had at
least proved rights in the marks under 4(a)(i).
Unregistered
Marks:
"The
Administrative Panel takes definite exception to the Complainant’s view
that rights to a unique geographical name should, evidently as a matter
of principle, "be regarded to belong to the owner of the geographical
area in question". However, applying by analogy relevant parts of the
European Court’s interpretation to evidence introduced by the
Complainant, the Administrative Panel concludes that the Port of Hamina
has acquired distinctiveness and become established in the meaning of
the [European Union] Trademarks Act as a trademark/service mark
relating to services originating from the City of Hamina/Port of
Hamina. Consequently, Port of Hamina is a trademark/service mark to
which the Complainant has rights": WIPO/D2001-0001
(portofhamina.com).
"The
Panel cannot agree with the contention that a unique geographical name
should be considered as belonging to the legal authority of the
geographical area in question under the Policy. In view [...] of the
fact that no market research or similar evidence has been submitted by
Complainant to prove establishment on the market in the sense of the
trademark law, the Panel cannot make a finding that trademark rights
exist in the denomination 'Port of Helsinki'": WIPO/D2001-0002
(portofhelsinki.com).
"Unless
the evidence demonstrates that the name of a geographical location is
in fact performing the function of a trademark, such a name should not
be considered a trademark for the purposes of the Uniform Policy": WIPO/D2001-0047
(brisbanecity.com).
Section 2.1.2.6 - Complainant's Domain Name
Panels
have read 4(a)(i) to include rights in Complainant's domain name where
the domain name functions as a common law trademark.
Comment:
While
earlier cases stated that the Policy does not refer to identity or
confusing similarity between Complainant's and Respondent's domain
names, the trend towards expanding the Policy to include various types
of unregistered common law marks has meant that Panels are also more
willing to find rights in a domain name that functions a common law
mark.
Reporter's
Notes:
If a
domain name has accumulated a great deal of goodwill via a popular
website, and is used to sell products or services and identify their
source or advertise these products and services, then the domain name
would at least have achieved the status of a common law trademark and
thus ought to be considered a protectable right under the Policy: WIPO/D2001-1103
(sandalsdot.com).
But
see:
Popularity
of a website is not, by itself, enough to confer rights under 4(a)(i)
of the Policy: WIPO/D2001-1106
(linkorama.com).
Section 2.1.2.7 - Patent Rights
Panels
have read 4(a)(i) to include patent rights.
Reporter's
Notes:
Panel
found that Complainant had exclusive right to market pharmaceutical
products containing telmisartan and meloxican by virtue of its patents
and FDA "new chemical entity" rules; thus, Complainant had established
sufficient rights under 4(a)(i): NAF/FA95011
(telmisartan.com and meloxicam.com ); WIPO/D2000-0266
(geniebooks.com found to be a common law mark in use by Complainant;
Panel detailed various uses of "geniebooks.com" as a mark in commerce);
.
Section 2.1.2.8 - Radio Call Letters
Panels
have read 4(a)(i) to include a radio station's call letters, where the
call letters have been used in a trademark sense.
Reporter's
Notes:
Broadcasting
call letters can serve as trademarks, if they are used in a trademark
sense: WIPO/D2000-0257
(WAVYTV.COM, WAVY-TV.COM, WAVYTV10.COM, and WAVY-TV10.COM).
TOPIC
2.1.3 - PARTIES WITH RIGHTS IN A MARK
Section 2.1.3.1 - Owners
A
Complainant has sufficient rights in marks that it owns to bring a
Complaint under the Policy.
Reporter's
Notes:
See, e.g., NAF/FA133759
(houselaw.com - service mark); WIPO/D2002-1039
(microesoft.com - trademark).
Section 2.1.3.2 - Licensees and Franchisees
Licensees
and franchisees may also have sufficient rights for the purposes of
4(a)(i).
Comment:
Where
the licensee brings a complaint alone, as opposed to appearing as
co-Complainant with the mark owner, Panels may require the licensee to
make some showing of either exclusive licensing or the mark owner's
assent to the licensee bringing an action under the Policy.
Reporter's
Notes:
Owners
of different marks (each of two marks identical to a disputed domain
name) and a licensee (that also owned same mark in different countries)
were admitted as co-Complainants: WIPO/D2000-0237
(babycreysi.com and creysibodega.com).
The
two Complainants were owners and cross-licensees of the other
Complainant's mark: WIPO/D2000-0914
(movicombellsouth.com).
Franchisee
admitted as Complainant: NAF/FA94969
(redwoodcitydodge.com and redwoodcitykia.com).
Exclusive
licensees have rights in the mark: NAF/FA109053
(principalsecrets.com); WIPO/D2001-0790
(okidata.net).
Section 2.1.3.3 - Other Parties as Co-Complainants
Panels
usually allow an owner to appear as a Co-Complainant with another,
closely-related party that also has some rights in the mark in question.
Reporter's
Notes:
Exclusive
marketing agent admitted as Co-Complainant: WIPO/D2000-0363
(fifa-world-cup.com).
Mark
owner and its sole stockholder were Co-Complainants: NAF/FA94346
(ultrapurewater.com).
The
Panel accepted as Co-Complainants two companies of which one was
acquired by the other, and whose marks had been combined in one domain
name, the future trade name of the acquired company: WIPO/D2000-0619
(chasefleming.net; chase-fleming.net; chase-flemings.net;
chasefleming.org; chaseflemings.org; chase-fleming.org; and
chase-flemings.org).
The
Panel admitted parent and subsidiary as Co-Complainants: WIPO/D2000-0587
(36 variations of yahoo and geocities - one owned the Yahoo mark and
the other owned the Geocities mark); WIPO/D2000-0523
(lusomundo.com - subsidiary owned the mark); WIPO/D2000-0159
(pochacco.com).
TOPIC 2.1.4 - OTHER MARK RELATED ISSUES
Section 2.1.4.1 - Timing of Rights in the Mark
Paragraph
4(a)(i) of the Policy requires the Complainant to have rights in a mark
(registered or common law) before the disputed domain name is
registered.
Reporter's
Notes:
Common law
rights: NAF/FA115042
(chinadaily.com); NAF/FA103181
(mypc2call.com); WIPO/D2001-1228
(planetarysociety.com).
Trademark
or service mark: WIPO/D2002-0943
(ezcommerce.com); NAF/FA135602
(transpark.com).
Section 2.1.4.2 - Location of the Mark
The mark does
not need to be registered in Respondent's country.
Reporter's Notes:
WIPO/D2000-0074
(microinfospace.com); DEC/AF-207
(universalpictures.net).
CHAPTER 2.2 - IDENTICAL OR CONFUSINGLY SIMILAR
a.
Applicable Disputes. You are required to submit to a mandatory
administrative proceeding in the event that a third party (a
"Complainant") asserts to the applicable Provider, in compliance with
the Rules of Procedure, that (…)
(i)
your domain name is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights (…)
In
the administrative proceeding, the Complainant must prove that each of
these three elements is present.
UDRP
Paragraph 4(a)(i)
TOPIC 2.2.1 - IDENTICAL
Section 2.2.1.1 - Spacing
A domain name
will be considered identical even where Respondent deleted spaces
between the words that form Complainant's mark.
Reporter's
Notes:
See, e.g., NAF/FA137221
(anncoulter.com - mark was "Ann Coulter"); NAF/FA140598
(daddysjunkymusic.com - mark was "Daddy's Junky Music").
Section
2.2.1.2 - TLDs
A domain name
will be considered identical where Respondent merely added a gTLD to
the Complainant's mark.
Reporter's
Notes:
The gTLD .com: WIPO/D2000-0493
(finding pomellato.com identical to Complainant's mark POMETELLATO
because the generic top-level domain (gTLD) '.com' after the name is
not relevant); NAF/FA137221
(anncoulter.com - mark was "Ann Coulter").
Other gTLDs: NAF/FA114351
(finding that the addition of the generic top-level domain '. net' is
inconsequential when conducting an 'identical' analysis -
filtercharger.net); WIPO/D2002-0760
(barep.biz, fimat.biz, sgam.info, sgbl.biz, sggroupe.biz,
sggroupe.info, sgmaroc.biz, sgprivatebanking.biz,
sgprivatebanking.info, sogecap.info, sogecap.net, sogelease.biz,
sogenal.biz, sogenal.info); WIPO/D2002-0424
(geac.org).
Section
2.2.1.3 - Punctuation
A domain name
will be considered identical where Respondent merely added or deleted
punctuation.
Reporter's
Notes:
Deleting
punctuation: WIPO/D2000-0321
(finding the domain name chichis.com to be identical to Complainant's
CHI-CHI'S mark, despite the omission of the apostrophe and hyphen from
the mark); NAF/FA140598
(daddysjunkymusic.com - mark was "Daddy's Junky Music").
Adding
punctuation: NAF/FA125229
(mark does not become dissimilar merely by adding hyphens - mark was
Dollar Rent A Car and the domain was dollar-rent-a-car.com); WIPO/D2002-0144
(france-telecom.com - mark was France Telecom).
TOPIC 2.2.2 - CONFUSINGLY SIMILAR
Section
2.2.2.1 - Is the Test
Objective or Subjective?
When
assessing confusing similarity, some Panels apply an objective test
that looks only to the mark and the alleged approximation of the mark,
while other Panels apply a subjective test which asks whether the user
would be confused upon visiting the website.
Comment:
Further
examples of this split can be seen in the sections that follow.
Reporter's
Notes:
Objective
test: see, e.g., WIPO/D2000-0662
(wal-martsucks.com - "the issue under the first factor is not whether
the domain name causes confusion as to source (a factor more
appropriately considered in connection with the legitimacy of interest
and bad faith factors), but instead whether the mark and domain name,
when directly compared, have confusing similarity"); WIPO/D2000-0109
(gate-way.com - "actual confusion is irrelevant since the test is
confined to a consideration of the disputed domain name and the
trademarks").
Subjective
test: see, e.g., WIPO/D2000-0996
(guiness-sucks.com - focusing on whether a reasonable user would be
confused); WIPO/D2003-0060
(ifficemax.com - Panel took into account the fact that Internet users
would be confused upon being directed to Complainant's site).
Section
2.2.2.2 - Adding,
Deleting, or Substituting Letters or Numbers
Adding,
deleting, or substituting letters or will not preclude a finding of
confusing similarity.
Reporter's
Notes:
Deleted letter:
"But for the lack of the pluralizing 's' in the domain name, it is
identical to Complainant's registered marks and Complainant's domain
name. Such a de minimis difference between a domain name and a
trademark is insufficient to overcome a finding of 'confusing
similarity.'" WIPO/2002-0835
(unitedairline.com). See also NAF/FA94730
(eliminating "e" in statfarm.com); NAF/FA94737
(eliminating "t" in marriot.com).
Added letter:
"where the only difference between the Complainant's mark and the
domain name in dispute is the letter 's', there is no question that the
Domain Name is confusingly similar to the Complainant's registered
mark: WIPO/2002-0762
(abeds.com). See also WIPO/D2000-0130
("h" added in chromalin.com); WIPO/D2000-0999
(adding "a" in telstraa.com).
Substitutions:
Respondent replaced "1st" in Complainant's mark by "first": NAF/FA94788.
See also WIPO/D2000-0588
("0" instead of "o" in gameb0y.com); NAF/FA94370
(replacing an "u" by an "o" in sunglasshot.com). Exchange of "$" by "s"
in Complainant's mark makes domain name confusingly similar: WIPO/D2000-0039
(budgetsaver.com).
Respondent added
"y" and "ies" to Complainant's mark ethnicgrocer.com: NAF/FA94384.
Numbers: The
addition of the numeral 4 as a prefix is wholly non-distinctive: WIPO/D2001-1469
(4unverferth.com); WIPO/D2002-0415
(1800okidata.com - "domain names containing a combination of 1800 and
the Complainant's trademark were confusingly similar to Complainant's
mark."); WIPO/D2000-0664
("2000" added to priceclub).
But See:
Added an "ing":
"in light of the common use of the words 'nations' and 'banking,' this
Panel fails to see how there is a likelihood of confusion between
NATIONSBANK and <nationsbanking.com >.To show that there is a
confusing similarity between the disputed domain name and the mark,
Complainant has to show that the public would be confused between its
mark and the addition of the suffix 'ing.'" NAF/FA103809
(nationsbanking.com).
Section
2.2.2.3 - Reversing the Words in a Mark
Reversing the
words in Complainant's mark will not preclude a finding of confusing
similarity.
Reporter's
Notes:
NAF/FA94992
('motorscook.com' confusingly similar to 'cookmotor.com'); WIPO/D2001-1075
(Panel would have found that vespavintage.com is confusingly similar to
Vintage Vespa mark; however, the Complainant merely argued that they
were identical so the Panel rejected the claim); WIPO/D2002-0207
("The domain names <bingogala.com> and <bingogala.net> are
confusingly similar to the registered stylised trade mark GALA BINGO
and to the unregistered 'Gala Bingo' as they are a simple reversal of
the order of the words constituting the Complainant's trade mark.").
Section
2.2.2.4 - Adding a Word to a Mark
Adding a word to
Complainant's mark will usually not preclude a finding of confusing
similarity.
Comment:
Panels are even
more likely to find confusing similarity where the word added relates
to Complainant's business.
Reporter's
Notes:
Adding a generic
word: NAF/FA141825
(chemyahoo.com and others - "it is also well-established under the
Policy that a domain name composed of a trademark coupled with a
generic term still is confusingly similar to the trademark"); WIPO/D2002-0367
(experianautomotive.com - addition of the generic term, 'automotive,'
does not distinguish Respondent's domain name from Complainant's mark
because the domain contains Complainant's EXPERIAN® mark in its
entirety); NAF/FA98071
(antibroadcom.com).
Adding a word
related to Complainant's business: NAF/FA129123
(thriftyairportparking.com - finding confusing similarity with the
THRIFTY marks, particularly since those additions have connotations
that relate to Complainant's business services); NAF/FA113283
(champs-sports.com and others - "The addition of generic words is
especially confusing where the generic words bear an obvious
relationship to Complainant's business"); NAF/FA109576
(hustlervideo.com - use of the generic term 'video' does not defeat a
confusing similarity claim, because the generic term directly relates
to Complainant's business, which increases the likelihood of
confusion); NAF/FA93670
(marriott-hotel.com).
Adding a
descriptive word: NAF/FA96700
(dewalt-woodworking-tools.com and others - "Respondent's use of nine
domain names using the DEWALT mark with a descriptive term are
confusingly similar."); NAF/FA124739
(uhaulem4cheap.com and others).
"The addition of
the suffix 'casa' does not affect the attractive power of the word
Prada and the name 'pradacasa' is consequently confusingly similar to
the registered trademarks Prada": WIPO/D2002-0928
(pradacasa.com)
"The addition of
the term 'my' as prefix to a mark does not diffuse the confusingly
similar nature between the disputed domain name and Complainant's mark.
Therefore, <mypc2call.com> is confusingly similar to
Complainant's mark PC2CALL": NAF/FA103181
(mypc2call.com)."The
"sucks" cases:
Panel is of the view that the addition of the suffix 'sucks' does not
defeat the confusingly similar requirement of the Policy": NAF/FA102247
(kendallhuntsucks.com). See also WIPO/D2001-0213
(adtsucks.com - noting that not every Internet user is well-versed in
the English language); WIPO/D2000-0662
(wal-martsucks.com - finding that while consumers would not be confused
a domain name is 'identical or confusingly similar' to a trademark for
purposes of the Policy when the domain name includes the trademark, or
a confusingly similar approximation, regardless of the other terms in
the domain name).
But See:
"sucks" cases: WIPO/D2000-1015
(lockheedsucks.com and lockheedmartinsucks.com - holding that 'both
common sense and a reading of the plain language of the Policy support
the view that a domain name combining a trademark with the word 'sucks'
or other language clearly indicating that the domain name is not
affiliated with the trademark owner cannot be considered confusingly
similar to the trademark."); WIPO/D2000-1104
(holding that 'a reasonably prudent user would not mistake the
wallmartcanadasucks.com site for any of Wal-Mart's official sites' and
expressing doubt as to whether a domain name including 'sucks' ever can
be confusingly similar to a trademark to which 'sucks' is appended.)
NAF/FA101509
("If Complainant is really making an initial interest confusion
argument, it would have to be suggesting that the public would be
expecting that its distinguished moniker and service mark TRUMP would
be readily associated with < porntumps.com>). The domain name at
issue does not suggest that the Complainant is the source, origin or
sponsor of Respondent's website.").
Section
2.2.2.5 - Internet Related Term Added
Adding an
Internet related term will not preclude a finding of confusing
similarity.
Reporter's
Notes:
Respondent added
"e" for electronic to Complainant's mark: WIPO/D2000-0167
(e-nike.com, enike.com); WIPO/D2000-0420
(e-computerworld.com); WIPO/D2000-0456
(egeneticsinstitute); NAF/FA112559
(e-viagra-xenical-celebrex-propecia.com - "Respondent Respondent's
addition of a hyphenated 'e' as a prefix to the contested domain name
makes the domain name confusingly similar to Complainant's mark since
the addition of a letter does little to reduce confusion among Internet
users; the CELEBREX mark's impact is still present.").
The addition of
the 'www' prefix to Complainant's registered mark does not create a
domain name that is distinct from the mark for purposes of Policy
4(a)(i) analysis: NAF/FA142319
(wwwshaklee.com).
WIPO/D2000-0428
("email" and "chat" added to YAHOO); WIPO/D2000-0435
("onlinestore" added to OLYMPIC and USOLYMPIC); WIPO/D2000-0508
("cyber", "e-home", "online", "internet" and "e" added to SHOPPING24); WIPO/D2000-0790
("web" added to AT(&)T).
Section
2.2.2.6 - Geographical Term Added
Addition of a
geographical term will not preclude a finding of confusing similarity.
Reporter's
Notes:
Confusing
similarity where geographical term was added to mark: WIPO/D2000-0150
("canada"added to WALMART); WIPO/D2000-0255
("ny" added to CBS); WIPO/D2000-0305
("international" added to ARMANI); WIPO/D2000-0437
("korea" added to IKEA with hyphen); WIPO/D2000-0927
("usa" added to ALTAVISTA).
"The addition of
the name of a place to a service mark, such as the addition of 'France'
to 'AOL', is a common method for specifying the location of business
services provided under the service mark. The addition of a place name
generally does not alter the underlying mark to which it is added": WIPO/D2000-0713
(aolfrance.com, aolgermany.com, aolireland.com and aolspain.com).
Section
2.2.2.7 - TLDs
Addition of a
TLD will not preclude a finding of confusing similarity.
Reporter's
Notes:
Where the mark
and the domain differed only by the addition of the TLD: WIPO/D2000-0418
(.com suffix); NAF/FA94372
(Net suffix); NAF/FA94446
(.org suffix).
Where the mark
and the domain differed by the TLD and other minor differences: WIPO/D2000-0503
(differences were TLD and lower cases); WIPO/D2000-0626
(differences were TLD, lower cases and space).
Section
2.2.2.8 - Punctuation
Changing the
punctuation will not preclude a finding of confusing similarity.
Reporter's
Notes:
Hyphens: "Where
the only difference between a mark and a domain name is the presence of
a hyphen between the prominent elements of the mark, such is not
sufficient to negate confusingly similarity": NAF/FA128071
(visual-credit-counseling.com). See also WIPO/D2000-0017
(drawtite.com is confusingly similar to DRAW-TITE trademark despite
lack of hyphen in domain name); WIPO/D2000-0038
(euro-tunnel.comis confusingly similar to EUROTUNNEL trademark despite
lack of hyphen in domain name).
Spacing: NAF/FA112563
(inationbydawn.com
- since spaces are not permitted in domain names Respondent's omission
of spaces does not mitigate the confusing similarity between the domain
name and Complainant's mark); WIPO/D2000-1613
(finding the domain name mannbrothers.com confusingly similar to
Complainant's MANN BROTHERS mark).
Section
2.2.2.9 - Combining Marks
Combining marks
will not preclude a finding of confusing similarity.
Reporter's
Notes:
Confusing
similarity where Respondent combined two of Complainant's marks: WIPO/D2000-1230
(pokemonpikachu.com).
Confusing
similarity found because domain name incorporated two marks of the two
Complainants: WIPO/D2000-0914
(movicombellsouth.com).
Confusing
similarity between Complainant(s)'s mark and domain name which
incorporated the names and marks of two merging companies: WIPO/D2000-0446
(monsantopharmacia.com and monsantopharmacia.net).
Confusing
similarity found because domain name was a combination of elements of
different marks owned by Complainants: WIPO/D2000-0227
(westfieldshopping.com - the marks were "Westfield," "Shoppingtown,"
and "A Westfield Shoppingtown").
Section 2.2.2.10
- Incomplete or Abbreviated Marks
Incorporating
less than Complainant's entire mark will not preclude a finding of
confusing similarity.
Reporter's
Notes:
See, e.g., NAF/FA95246
("precious metals" omitted in GOLDMASTERS PRECIOUS METALS); NAF/FA95262
(gettymuseum.com and gettysmuseum.com instead of THE GETTY and THE J.
PAUL GETTY MUSUEM); NAF/FA95284
(drfostersmith.com instead of DOCTORS FOSTER & SMITH); NAF/FA95310
(perotsys.com instead of PEROT SYSTEMS); NAF/FA95399
("w." and co." omitted in WALTER W. CRIBBINGS CO.); NAF/FA95606
(accessaz.com instead of ACCESSARIZONA.COM).
But see:
No confusing similarity between "Worldcup" and "wc2002.com" and
"wc02.com" because the domain name does not contain the mark and the
abbreviation might mean different things apart from world cup: WIPO/D2000-0034.
Section
2.2.2.11 - Design Mark or Logo
A domain name
can be confusingly similar to Complainant's logo or design mark.
Reporter's
Notes:
See, e.g., WIPO/D2002-0324
(fortum.net - domain name was identical to the trademark FORTUM in
which the Complainant has rights and confusingly similar to the logo
mark incorporating the word FORTUM to which the Complainant also has
rights); WIPO/D2002-0061
(tengizchevroil.net - domain name was identical to Complainant's
unregistered trademark TENGIZCHEVROIL and was confusingly similar to
Complainant's registered mark in logotype form); WIPO/D2001-0932
(sydneymarkets.com - domain name is confusingly similar to the
Complainant's unregistered common law logo for 'Sydney Markets'); WIPO/D2002-0253
(gardnersmarket.com); WIPO/D2000-1810
(heladosefe.com).
TOPIC 2.2.3 -
OTHER CONSIDERATIONS IN ANALYZING CONFUSING SIMILARITY
Section
2.2.3.1 - Beyond Comparing
the Mark and the Domain Name
Some Panels
looks beyond the mark and the domain name when assessing confusing
similarity, including the use of the mark on the website, the fame of
the mark, whether Complainant and Respondent operated in similar lines
of business, and other factors.
Comment:
On the other
side, a large number of Panels have held that any analysis beyond
whether the actual mark and domain name are identical or confusingly
similar is inappropriate.
Reporter's
Notes:
Panel took into
account that Respondent used Complainant's mark on website in order to
assess confusing similarity: WIPO/D2000-0187
(webergrills.com and other variants); WIPO/D2000-0743
(drmath.com); DEC/AF-134
(wwwnationalenquirer.com); NAF/FA95407
(statefarm-claimshelp.com); NAF/FA94944
(sandalshoneymoon.com and others); NAF/FA94956
(golferspassport.com).
Panel held that
to assess the confusing similarity "You must judge [the marks], both by
their look and by their sound. You must consider the nature and kind of
customer who would be likely to buy those goods. In fact you must
consider all the surrounding circumstances; and you must further
consider what is likely to happen if each of those trade marks is used
in a normal way as a trade mark for goods of the respective owners of
the marks": WIPO/D2000-0179
(medisite.com - citing a British case).
Panel took into
account that Respondent's domain name would cause confusion among
ordinary Internet users or consumers: WIPO/D2000-0241
(yahooventures.com); DEC/AF-264
(multimatic.com).
Panel considered that the mark was
famous or well-known: WIPO/D2003-0019
(sixcontinentalhotels.com - mark was well-known); NAF/FA144628
(hpcanada.com - mark was famous).
The fact that emails were erroneously
sent to Respondent instead of Complainant taken as proof of confusing
nature of Respondent's domain name: WIPO/D2000-0573
(jal.com).
Confusing similarity found in the
marketplace and not by an abstract comparison of domain name and mark: DEC/AF-148
(spotup.com).
Confusing similarity found because
Internet users typing in Complainant's name would be directed to
Respondent's site: NAF/FA94962
(don-olson.com); NAF/FA94969
(redwoodcitydodge.com and redwoodcitykia.com); DEC/AF-153
(westfairfoods.com).
Panel held that confusion was caused or
at least increased by the fact that Complainant and Respondent operated
within the same industry: WIPO/D2000-0127
(efitnesswarehouse.com); NAF/FA93631
(soundchoice.net).
Panel considered the fact that
Respondent's site contained a disclaimer but held that the disclaimer
did not eliminate any confusing similarity: WIPO/D2002-0799
(allenedmondsshoes.com); WIPO/D2000-1264
(pge2000.com and others).
No confusing similarity between mark and
domain name found because they were used for different classes of goods
and services: WIPO/D2000-0803.
But see:
"The test of confusing similarity under
the Policy is confined to a comparison of the disputed domain name and
the trademark alone, independent of the other marketing and use factors
usually considered in trademark infringement or unfair competition
cases": WIPO/D2003-0038
(legoclub.com).
Confusing similarity is limited to the
names involved and does not extend to the overall manner of use of the
names: WIPO/D2002-0834
(vanguad.com - the fact that the website to which the subject domain
name resolves will confuse users is irrelevant); WIPO/D2000-0927
(altavistausa.com - different lines of business irrelevant); WIPO/D2000-0959
(cdlhotels.com - the fact that Complainant and Respondent were in
different businesses and the website itself might have dispelled any
confusion was held to be irrelevant); (thesands.com and carsands.com -
the use of a disclaimer is irrelevant to confusing similarity
analysis); WIPO/D2000-0016
(whether the mark is famous and the class of goods and services for
which the mark was registered was deemed irrelevant); WIPO/D2000-0270
(htmlease.com - knowledge of the mark is not relevant to assess
identity and confusing similarity)
Section
2.2.3.2 - Amount of Proof
Required
Proof of actual
confusion is not required, although evidence of actual confusion is
persuasive.
Reporter's
Notes:
Although
evidence of actual confusion would be persuasive evidence of that the
domain name and mark are confusingly similar, the absence of actual
confusion does not preclude such a finding: WIPO/D2000-0104
(eautomotive.com).
Evidence of lack
of actual confusion is irrelevant since the test is confined to a
consideration of the disputed domain name and the trademarks: WIPO/D2000-0109
(gate-way.com).
A likelihood of
confusion between mark and domain name is not required: NAF/FA94375
(lumena.com).
The fact that emails were erroneously sent to
Respondent instead of Complainant taken as proof of confusing nature of
Respondent's domain name: WIPO/D2000-0573
(jal.com).
The Panel
observed that the level of proof that is required to show confusing
similarity did not require the presentation of additional tangible
evidence such as showing that consumers or others utilizing
Complainant's services were actually confused between the two or that
Complainant had lost business because of this confusion although
Complainant could have made a stronger case by submitting such
evidence: DEC/AF-137
(adserve.com).
Section
2.2.3.3 - Pleading
Identity and/or Confusing Similarity
Some
Panels limit their inquiry to what Complainant has actually alleged in
its Complaint.
Reporter's
Notes:
Panel
declined to consider whether the domain name was confusingly similar
because Complainant had only pled that the domain name was identical to
its alleged mark: WIPO/D2001-0719
(jonesapparelgroup.com).
If
identity is pleaded but not confusing similarity, Complainant is
required to prove identity: WIPO/D2000-0032
(wheatthins.com, wheatsworth.com, bettercheddars.com,
harvestcrisps.com, and milk-bone.com); NAF/FA95250
(pueblo.org - since Complainant only alleged that the domain name was
identical, the Panelist did not consider confusing similarity and
rejected Respondent's concession that the domain name was identical), DEC/AF-388
(rosevilleonline.com).
Please send all inquiries to: Diane Cabell
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