Strength of the mark and confusing similarity in UDRP proceedings

Introduction

It is generally accepted that proving confusing similarity for the purpose of the UDRP (Uniform Domain Name Dispute Resolution Policy) is normally not a very challenging task. However in some cases proving confusing similarity can be problematic for complainants.

As stated in?WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”):?“it is well accepted that the first element functions primarily as a standing requirement.” (see par. 1.7).

While WIPO Overview 3.0 in the same paragraph states that “issues such as the strength of the complainant’s mark, are decided under the second and third elements”, UDRP case law proves that the strength of the complainant’s mark can sometimes?affect Panel’s analysis of confusing similarity under the first element.

Relevant UDRP case law

<FLINGPALS.COM>,?the Forum decision, dated July 18, 2022,?FA2205001995514

Complainant?operated?an adult dating service website?and relied on the?“FLING”?trademark registration in the US.

The Respondent questioned confusing similarity with the disputed domain name?because?“FLING”?is a common and generic word, used often in relation to the business of online dating.

The Panel found the Complainant failed to meet the first UDRP element based on the following:

1.?????The mark is compound by a descriptive term (“FLING”?describes the?Complainant’s?services)?and?its trademark rights are weak.?This weakness also provides from the fact the specification of goods is very narrow?(to avoid?rejection by the USPTO based on the descriptiveness).

2.?????The Panel considered?Complainant’s trademarks are at the very least quasi-descriptive.

3.?????The?disputed?domain name is comprised not just of the term “FLING” but also the term “PALS”.?The Panel finds that the cited weakness along with the addition of the term PAL by Respondent makes domain name is neither identical nor confusingly similar to?a trademark?in which the Complainant has rights.

<?AFFORDABLEPAPERS4U.COM>, CAC case No. 102537, decision dated November 28, 2019

Complainant relied on its US word trademark “AFFORDABLE PAPERS” and was a provider of “paper and essay writing services”.

No response was filed. The Panel gave a rather detailed analysis of confusing similarity in case of trademarks and domain names consisting of generic terms (such as “Affordable”, “Papers” and “4U”) and concluded that:

1.?????The Complainant’s trademark consisting of the “AFFORDABLE PAPERS” denomination is rather non-distinctive.?The words “AFFORDABLE" and "PAPERS” are both descriptive or laudatory of the services in respect of which the trademark and the domain names are used. i.e. providing on-line writing services at an affordable price.?

2.??????The Internet search?results?show that the words "AFFORDABLE" and "PAPERS" are commonly used by other service providers. Consequently,?the?words "AFFORDABLE" and "PAPERS" are not, by far, attributable or connected solely to the business of the Complainant.

3.?????For?a domain name to be regarded as confusingly similar to the Complainant's trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the Complainant and/or its services.?This is not the case?here, hence there is no confusing similarity between the “Affordable Papers” mark and the domain name <?AFFORDABLEPAPERS4U.COM>.

<?SANTE.COM>, CAC Case No.101988, decision dated July 21, 2018

Complainant relied on a number of international, EU and German figurative trademark registrations with the word element “SANTE”.

Respondent claimed?that these marks are not for the word “sante” itself, but for composite marks which do not confer rights in the generic word “sante”?(“health” in French).?

The Panel agreed with Respondent’s submissions emphasizing that:

1.?????A domain name consisting of a common word or phrase as its second-level domain (SLD) is not necessarily confusingly similar to a composite mark containing that word or phrase.

2.?????The Complainant has provided no evidence at all to show that the word SANTE has become distinctive by itself of the Complainant’s business, so that Internet users would assume that the disputed domain name must be connected with the Complainant.

3.?????The fact that one of the links on the Respondent’s web page located a website that sold the Complainant’s products is insufficient to establish this. Conversely, the Complainant’s long delay in pursuing any complaint suggests that there has not been any confusion.

<?TARJETAROJADIRECTA.NET>, <TARJETAROJA.INFO>, CAC Case No.?100309, decision dated October 03, 2011

Complainant claimed the disputed domain names were confusingly similar with its Spanish trademark with a word element “Rojadirecta”.

Respondent disagreed and claimed that?the term?“Red Direct” (“Roja Directa” in Spanish)?is commonly used and refers to the?red?card in football.

The Panel agreed with Respondent’s position and based its reasoning on the following arguments:

1.?????Complainant is the owner of a combined word and device trademark with the wording?“rojadirecta”?and the image of a man/referee holding a red card in his left hand.?The Spanish term “roja directa” is only a descriptive term for the red card used especially in football.?

2.?????This generic use of the term "roja directa" is important in the light of the fact that both parties have a common background in the Spanish language?and target Spanish speaking audience.

3.?????In cases where the word element is a dictionary or common term and has no inherent distinctiveness, there should be an onus on the complainant to present compelling evidence of secondary meaning or distinctiveness through extensive use. As this evidence is missing here, there is no likelihood of confusion.

Conclusion

The UDRP is a very efficient mechanism for resolving domain name disputes but one has to be aware of its limitations and challenges.?

The first UDRP element is sometimes considered an easy one to establish as long as complainant has trademark registrations.?

However, the complainants need to understand that the strength of their marks can be a decisive factor in UDRP disputes.