Is a domain name that sounds -- but doesn't look -- like a trademark confusingly similar to the trademark? As cybersquatters push the boundaries, it's a question that raises some interesting issues.
Traditional U.S. trademark law has addressed this topic for some time, resulting in a test often referred to as "sound, sight and meaning." As Professor McCarthy has said in his treatise on trademarks: "Marks may sound the same to the ear, even though they may be readily distinguishable to the eye."
Sound, Sight and Meaning in Trademark Cases
For example, Professor McCarthy has noted that courts have found the following trademarks confusingly similar (outside the scope of domain name disputes):
- COCA-COLA and CUP-O'-COLA
- PORSCHE and PORSHA
- SEIKO and SEYCOS
- S.O. and ESSO
Importantly, because these trademarks sounded alike (even if not exactly the same), the courts said that they were confusingly similar in part on the basis of phonetic similarity. This phonetic similarity is what became known as the "sound, sight and meaning" trilogy -- where, as described by Professor McCarthy, "the conflicting marks are to be compared with respect to similarity of pronunciation, appearance and verbal translation."
This "sound, sight and meaning" trilogy occasionally arises in domain name cases as well, where the first test for any trademark owner in a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) is to show that the disputed domain name is "identical or confusingly similar" to a trademark in which the complainant has rights.
While many, if not most, UDRP cases involve domain names that contain a complainant's trademark, or a simple misspelling (or typographical variation), in its entirety, occasionally a UDRP dispute involves a domain name that only sounds like a trademark.
Aural Comparisons in UDRP Cases
For example, in a dispute over <clicknloan.org>, Quicken Loans Inc. argued that the domain name was confusingly similar to its QUICKEN LOANS trademark -- "because of phonetic similarities." As the UDRP panel wrote:
Complainant provides documentation from the Trademark Trial and Appeal Board..., as well as information from US courts..., to show that such authorities have recognized phonetic similarities as a basis to find a likelihood of confusion. Complainant argues that the phonetic similarities between the QUICKEN LOANS mark and the phrase “clicknloan” include the number of syllables, the hard “k” sound, and the pattern of stressing syllables.
The UDRP panel agreed. Its conclusion is reminiscent of a pre-Internet trademark case (involving the marks DRAMAMINE and BONAMINE) in which a court said that "[s]light differences in the sound of similar trademarks will not protect the infringer."
The <clicknloan.org> UDRP case is not the only domain name dispute to adopt this reasoning. Indeed, the WIPO Overview states: "Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name." (Emphasis added.)
In various decision, for example, UDRP panels have found <bunsandnoble.com> confusingly similar to the trademark BARNES & NOBLE; <onetwotrick.com> confusingly similar to the trademark ONE TWO TRIP!; and <eltour.net> confusingly similar to the trademarks L’TUR and LTUR.
In the <eltour.net> decision, the panel said that it was "prepared to accept that phonetic similarity can constitute confusing similarity for the purpose of" the first element of the UDRP and that it was "mindful of the fact that in most systems of trademark law provision exists for infringement by way of phonetic similarity."
