As discussed during our recent UDRP webinar,[i] there may be times when including a brand in a domain is allowed as a matter of “fair use,” such as when the website content involves commentary, criticism, or comparative advertising, or when a trademark is composed of a generic or descriptive word. However, there are other times when a domain name includes the trademark of a company and may cause public confusion or be considered bad faith use. In the latter instances, the outcome of a UDRP case depends on whether a brand and its products are specifically being targeted.
It is against this background that I would like to discuss the role played by words that are added to a brand name and, together, form a domain name.
Take, for example, the domain bigapple.site. This might be viewed as using a descriptive phrase that commonly refers to New York City, but the domain name bigapplephone.site is more likely to make viewers think of the screen size of a product sold by a certain technology company based not in New York, but in California.
Why Words Matter For The Outcome of A UDRP Case
One good example of a domain name dispute case involving a brand name may be found in a UDRP decision for buycheapcialisonline.biz.
Had the domain been simply cialisonline.biz the respondent might have argued, subject to the content of its website, that the domain was intended to host comments about online information concerning the drug Cialis or some other non-commercial fair use.
However, the addition of the words “buy cheap” in the domain leave little room for doubt as to the intent of the respondent. This led the Panel to note that, “domains consisting of words that could conceivably be construed as generic or descriptive terms may in fact enhance the confusing similarity between the domain name and the mark.”
In a slightly different vein, while the name PUBLIX is widely recognized by consumers in the American southeast as the brand name of a large supermarket chain and in-store pharmacy, the same brand has been used, at different times and by unrelated companies, for such diverse items as dress shirts, oil and gas drilling, and the processing of debit card transactions.
As such, a domain like publix.web could potentially relate to any one of these businesses.
But the domains publixonlinehealthcarestore.com and publixonlinerxstore.com were found to be confusingly similar to the well-known supermarket company’s trademark, in part, because of their use of the additional words “healthcare,” “rx,” “online,” and “store.”
According to the Panel, “these terms enhance the confusion as they are apt to describe services provided by the Complainant.” Such words, which are related to the brand owner’s business, leave no doubt as to what the domain owner was targeting and can make all the difference in a UDRP dispute.
How Are New gTLDs Seen In Domain Name Dispute Cases?
Even use of a particular top-level domain can impact the confusion analysis in a UDRP case.
Let’s look at a domain name dispute involving the name dunkin.menu. It was found to be confusingly similar to the Dunkin’ Donuts trademark “because there is a reference to food and restaurants inherent in the new gTLD ‘.menu,’ [and] the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”
In contrast, use of the .club TLD influenced a panel to decide that fimo.club did not violate the UDRP as the respondent intended to create a non-commercial website dedicated to fans of FIMO modeling clay.
Is Confusion Less Critical Than Rights or Bad Faith?
Since the confusing similarity analysis of UDRP par. 4(a)(i) is a rather low-standard threshold test, I feel it is more likely that the use of additional words will impact a panel’s consideration of the 4(a)(ii) and (iii) factors, whether a domain owner has any rights or legitimate interest in the name and whether it registered and used the domain in bad faith.
In some UDRP cases additional words will change the confusion analysis (as noted in my bigapple.site example above).
It is more likely that these words will offer insight into whether the domain owner has a legitimate interest in the domain (hosting a criticism site or perhaps selling replacement parts for a branded product) or is acting in bad faith (trying to draw in visitors to a scam page by getting them to think the domain relates to the brand owner’s product).
As always, the best approach is to carefully assess each domain name dispute case before diving into a UDRP complaint. I’ve found that having a good reputation for being a responsible trademark enforcer can go a long way towards settling many other disputes without the need to go through the full UDRP case process. To the contrary, having a reputation as improperly aggressive and pushy can lead to more problematic settlement discussions in many cases.
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