The outcome of a recent UDRP complaint filed by RevZilla Motorsports LLC (Complainant) with the National Arbitration Forum (NAF) hinged on how identical and/or confusingly similar the Panel would find the words REVZILLA and PARTZILLA.
The complaint was filed against Tom Dazevedo (Respondent) over the domain name partzilla.com. The Complainant, who sells motorcycle gear through the domain name revzilla.com and owns the trademark registration REVZILLA, argued that the Respondent’s use of partzilla.com to sell identical goods was intentionally done to create confusion and disrupt the Complainant’s business.
In response, the Respondent pointed out that there are over 240 active trademark registrations and applications in the US which have the suffix –ZILLA, including three others registered for motorsports parts and accessories. He also denies that he is a competitor of the Complainant’s business, highlighting the differences in the types of items they each sell.
In the end, the NAF Panel didn’t even need to address issues relating to the Respondent’s rights or legitimate interests to the domain name, or the possibility of him having registered or used it in bad faith after finding that the domain name was not identical and/or confusingly similar. The Panel references the decisions that resulted from two other cases that it believes were relevant to this case:
The case of HomeVestors of America, Inc. v. Cristino Chico FA904273 (NAF April 2, 2007) was one in which the Complainant owned the name WE BUY UGLY HOUSES and the disputed domain name was I SELL UGLY HOUSES. The Panel held that the common part of both names, namely “ugly houses”, was generic and similarity was denied.
Also, it was said in Tire Discounters, Inc. v. Tirediscounter.com FA 679485 (NAF 14,2006) that “because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter.”
In its final decision, the Panel states that it is not unreasonable to find no confusing similarity in a case where two domain names have a suffix in common, but no similarity in the prefixes. In this case the difference between REV and PART was too great for the Panel to find a case of confusing similarity, and given that a Complainant must meet all three elements of the UDRP, the Panel concluded that the complaint must be denied.
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