Regular readers of this blog and others familiar with anti-cybersquatting know that, in order to succeed with a UDRP complaint, a brand owner must satisfy all three elements of par. 4(a) of the policy. The first element of proving a complaint against domain name trademark infringements is proving that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” This test of confusing similarity is not quite the same as the rather complex 12 or 14-factor ones employed by the courts but is simpler and more akin to the famous “sight, sound, and meaning” test. In other words, when determining whether a domain name is similar to a trademark, we must look at its appearance when viewed, how it sounds when pronounced, and any meaning it may have or image it brings to mind.
Sometimes this is a very straightforward analysis such as when the domain JackInTheBox.Email copies the entirety of the famous restaurant trademark and merely adds the .EMAIL TLD. Other times it may require a minor leap of thought such as connecting the domain Dunkin.Coffee to the Dunkin’ Donuts brand. But sometimes the analysis gets rather muddy such as when the couture brand Philipp Plein was claimed to be confusingly similar to the domain peopleincasinos.com. In that case, the trademark was rather buried in the domain (bolded above) but most who view the domain saw the phrase “people in casinos” and the Panel in that case concluded as much when it denied the case.
Digging for Buried…Trademarks
This week we had another opportunity to read a case with a somewhat buried trademark but the result was quite different. The well-known bank Capital One Financial Corp. took aim at the domain capitalmoneybank.com, which was registered by a credit mediation company in Bulgaria called Capital Group Srl. Citing its ownership of the trademark “CAPITAL ONE”, the Complainant asserted that the domain is confusingly similar to the mark. In defense, the Respondent argued that there is a fundamental distinction to be made between the words “money” and “one” and that, when considering the appearance, sound, and meaning of the domain, there is no likelihood of confusion with Complainant’s mark.
In addressing this debate, the Panel noted that panels in other cases have decided that “minor alterations to a valid trademark fail to belie the contention that a disputed domain name is confusingly similar under an analysis of Policy ¶ 4(a)(i).” He ultimately held that that Respondent’s domain name, capitalmoneybank.com, is confusingly similar to the “CAPITAL ONE BANK” mark as it “incorporates the mark entirely, eliminates the spacing between words, adds the letters ‘m’ and ‘y’ to the ‘ONE’ in ‘CAPITAL ONE BANK.’”
While I think his conclusion was a reasonable one, I find this decision disappointing because the Panel didn’t address the question of how the domain is perceived by the average internet user. Like the peopleincasinos.com case which included a lengthy discussion of the elements of confusing similarity, I feel the question of whether the domain here includes the word “money” or merely the word “one” surrounded by the letters “m” and “y” deserved to be well vetted. Instead, the Panel here devoted a mere two lines to the confusion question and never addressed the real difference between the domain and the trademark other than calling it a “minor alteration.” He then went on to discuss the other two elements of the UDRP and ordered that the domain be transferred to the Complainant.
Takeaways for Future Questions of Domain Name Trademark Infringement?
It is certainly not necessary for every UDRP decision to engage in extensive and detailed analysis of every one of the required factors – certainly not for the more obvious cases as noted above. However, when there are close calls like this, I feel that panels owe it to the parties, to others who might quote their decision in future complaints, and even to the merely curious domain-obsessed reader, to provide more insight and thoughtful explanation of why they’ve decided the way they have. This would serve the entire domain community and is a reasonable expectation of those trusted with the responsibility of arbitrating important property disputes.
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