When Two Trademarks Aren't Confusingly Similar to One Trademark

As I've written before, domain name disputes involving multiple trademarks sometimes raise interesting issues, including whether a panel can order a domain name transferred to one entity without consent of the other. While panels typically have found ways to resolve this issue, one particularly troubling fact pattern arises when a panel denies a complaint simply because a disputed domain name contains trademarks owned by two different entities. The situation presents itself when a panel considers whether a domain name containing two trademarks is "identical or confusingly similar" to a single trademark -- that is, the trademark owned by the complainant -- as required by the first factor of the Uniform Domain Name Dispute Resolution Policy (UDRP).

In one odd case, a UDRP panel confronted the issue when a complaint was filed by the owner of the trademark NSK, but the disputed domain name also contained the trademark SKF -- "which is a third-party brand of bearing products which competes with Complainant." Therefore, the panel was faced with the question of whether the domain name <skfnsk.com> was confusingly similar to the complainant's SKF trademark.

Many UDRP panels apply this first UDRP factor liberally. Indeed, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, says, "The first element of the UDRP serves essentially as a standing requirement."

And, many UDRP panels have adopted the position that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.”

Still, the panel in the <skfnsk.com> case saw things differently, writing:

The Panel finds that Complainant has not met its burden regarding confusing similarity. Complainant has adequately alleged its interests in and to the NSK mark; however, Complainant has no rights or interests in the SKF mark. Complainant alleges no nexus between it and the owner of the SKF mark. As such, Complainant essentially has standing to bring this claim regarding the NSK mark but not the SKF mark.

As a result, the panel denied the complaint, allowing the respondent to retain registration of the disputed domain name even though it contained the complainant's trademark.

Amazingly, two days after the decision in the <skfnsk.com> case had been published, the Forum published another UDRP decision in a similar case also filed by the owner of the trademark NSK and also containing the SKF trademark. And the panel in that case reached a different conclusion! In that case, the panel found <nsk-fag-skf-ntn.com> confusingly similar to the NSK trademark, writing that "the Panel agrees that the additions Respondent has made to the NSK mark are insufficient to overcome Policy ¶ 4(a)(i)."

The panel's denial in the <skfnsk.com> case also contradicts an earlier decision with similar facts, involving the domain name <skf-nsk-bearings.com>. There, the panel simply wrote: "Complainant argues that the <skf-nsk-bearings.com> domain name is confusingly similar to the NSK mark for the following reasons: 'skf' refers to a third-party brand of bearing products which competes with Complainant, and 'bearings' is a term descriptive of Complainant’s business. The Panel agrees."

The panel's denial in the <skfnsk.com> case is difficult to reconcile with the other decisions, and it seems to be quite unusual. Still, it is not the only time a panel has taken this perspective. In a case involving the domain name <nikegoogle.com>, a panel denied the complaint because it was filed only by Nike, not by Google, and "Complainant has failed to establish rights in or to the GOOGLE mark per" the first requirement of the UDRP.

Interestingly, the <nikegoogle.com> case was refiled soon after the denial, with both Nike and Google as complainants. The second panel ordered the domain name transferred -- to Nike, as the parties requested. (Oddly, the second decision does not address the first decision, which raises the interesting question of whether the second complaint was a proper case for refiling, which UDRP service providers and panels typically accept only in limited circumstances.)

While the <skfnsk.com> and (first) <nikegoogle.com> cases are outliers, the decisions reinforce the importance of joining all relevant trademark owners in a UDRP complaint, or at least ensuring that the record demonstrates their relationship and consent. As in all domain name disputes, nothing should be taken for granted.

Thoughts About the Proposed Copyright Alternative Dispute Resolution Policy

A proposal from the Domain Name Association (DNA) would provide copyright owners with a new tool to fight online infringement -- but the idea is, like other efforts to protect intellectual property rights on the Internet, proving controversial. The proposed Copyright Alternative Dispute Resolution Policy is one of four parts of the DNA's "Healthy Domains Initiative" (HDI). It is designed to:

construct a voluntary framework for copyright infringement disputes, so copyright holders could use a more efficient and cost-effective system for clear cases of copyright abuse other than going to court and registries and registrars are not forced to act as “judges” and “jurors” on copyright complaints.

The concept of the Copyright ADRP appears similar to the longstanding Uniform Domain Name Dispute Resolution Policy (UDRP). But, unlike the UDRP, which applies only to domain names, the Copyright ADRP would apply to what the DNA describes as "pervasive instances of copyright infringement."

While many domain names are used in connection with infringing websites, the UDRP is only available when the domain name itself is identical or confusingly similar to a relevant trademark. As a result, the UDRP is often not available to copyright owners, despite obviously infringing content.

Although the Digital Millennium Copyright Act (DMCA) already is frequently invoked by copyright owners to take down infringing content, it has significant limitations. For example, many website hosting companies (especially those outside the United States) do not participate in the DMCA system, and the counter-notification process for infringers can easily be used to defeat a DMCA claim. In those cases, a copyright owner often has no choice but to accept the infringing website or incur the burdens of fighting it in court.

The Copyright ADRP is a fascinating idea that, if properly drafted and implemented, could help reduce infringing content on the Internet and would complement both the UDRP (and other domain name dispute policies) as well as the DMCA.

Still, the idea of the Copyright ADRP already is meeting resistance. A blog post at Domain Incite expresses concern that the policy could be unfairly applied "in favor of rights holders." The Electronic Frontier Foundation reportedly has called it "ill-conceived" and "the very epitome of shadow regulation." And the Internet Commerce Association is worried about "a chilling effect on the domain leasing and licensing business."

Given the early stage of the proposed Copyright ADRP and the undeniable prevalence of online copyright infringement, the criticism seems premature and/or unwarranted. Like any legal enforcement mechanism, the devil will be in the details -- and, at this point, the details seem to be minimal.

As of this writing, it is unclear how the DNA's proposal would be applied other than a broad statement that it should be limited to instances "where the alleged infringement is pervasive or where the primary purpose of the domain is the dissemination of alleged infringing material." How to define "pervasive" or "primary purpose" (let alone "infringement" -- something with which the courts have long struggled) is far from clear.

Plus, numerous questions remain to be answered. Among the most important: As a voluntary dispute system (not mandated by ICANN), which registries and registrars would adopt the Copyright ADR? And who would administer it?

The answers to all of these questions are worth pursuing because, regardless of whether the DNA's idea is workable, reducing online copyright infringement is a laudable goal that will only strengthen the usefulness of and confidence in the Internet.

How to Suspend a .us Domain Name

Although rarely used, the usTLD Rapid Suspension Dispute Policy (usRS) allows a trademark owner to seek the suspension of a domain name in the .us country-code top-level domain (ccTLD). The usRS has many things in common with the Uniform Rapid Suspension System (URS), which applies to domain names in the new generic top-level domains (gTLD). Among other things:

  • Both policies are administered by the Forum.
  • Both policies have filing fees that start at only $375.
  • Both policies have strict, 500-word limits on complaints.
  • Both policies have awkward mechanisms for addressing defaults and appealing decisions.
  • Both policies require a trademark owner to prove three (almost identical) elements to prevail.
  • Both policies set a high burden of proof: "clear and convincing evidence."
  • Both policies allow a trademark owner to get a domain name suspended for the balance of the registration period (plus one year, if the trademark owner pays the renewal fee).
  • Both policies are very quick, typically requiring an examiner to submit a determination within three business days after examination begins.

Under the usRS policy, a trademark owner must prove all three of the following to obtain a suspension order:

the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the usRS complaint is filed; and

 

the Registrant has no legitimate right or interest to the domain name; and

 

the domain was registered or is being used in bad faith

The usRS contains one key difference from the URS: While the URS requires a trademark owner to prove that the disputed domain name "was registered and is being used in bad faith," the usRS requires only that the disputed domain name "was registered or is being used in bad faith."

It's a subtle but potentially important distinction. It's also consistent with the differences between the dispute policies that allow a trademark owner to seek the transfer of a domain name: The Uniform Domain Name Dispute Resolution Policy (UDRP) (which applies to .com and the new gTLDs, among others) contains the same "and" requirement for the bad faith element, while the usDRP (which applies to the .us ccTLD) uses the lower-threshold "or" language.

In any event, there have been very few decisions under the usRS, so it's unclear what impact, if any, the looser bad faith requirement has played. As of this writing, the Forum has had more than 650 URS cases since 2013 (and the Forum is not the only URS service provider), but only four usRS decisions since the policy went into effect on July 1, 2014. The scarcity of cases is probably due to a combination of factors, including the relatively low popularity of the .us ccTLD; the limited suspension remedy; and a lack of awareness by trademark owners of the availability of the usRS.

(According to Neustar, the registry operator for the .us ccTLD, there are about 2.1 million .us domain name registrations. By comparison, there are about 127.5 million .com domain name registrations.)

Despite its lack of popularity, the usRS is a quick, inexpensive and effective way for a trademark owner to tackle cybersquatting in the .us ccTLD.

 

When a 'Response Fee' is Required in a URS Case

Although filing fees in domain name disputes are usually paid for by the trademark owner that files a complaint, the Uniform Rapid Suspension System (URS) contains a little-noticed provision that, in large cases, requires the domain name registrant to pay a fee to defend itself. The so-called "Response Fee" is only required in URS cases that include 15 or more disputed domain names. Specifically, paragraph 2.2 of the URS states:

Complaints listing fifteen (15) or more disputed domain names registered by the same registrant will be subject to a Response Fee which will be refundable to the prevailing party. Under no circumstances shall the Response Fee exceed the fee charged to the Complainant.

In my review of all 652 URS cases filed at the Forum as of this writing, only two cases with 15 or more domain names have resulted in determinations: One involving 16 domain names and the WHATSAPP trademark; the other involving 474 domain names and the ASHLEY FURNITURE trademark. (I wrote about the latter in an earlier blog post, "Here’s the Largest URS Complaint Ever Filed.")

(The Forum is, by far, the leading URS provider. As of this writing, the Asian Domain Name Dispute Resolution Centre has received only 31 URS cases, and MFSD has received only 10 URS cases -- none of which involve 15 or more domain names;.)

Both of these large URS cases were defaults, which indicates that the domain name registrant did not submit a response. Therefore, presumably, no Response Fee was submitted either.

The concept of a Response Fee does not appear in the more popular Uniform Domain Name Dispute Resolution Policy (UDRP), so it is difficult to draw many (or, perhaps, any) conclusions about the impact of this requirement from only two URS determinations.

Still, the additional fee is obviously an interesting way for a "prevailing party" to recoup some of its expenses -- although, perplexingly, the URS does not define "prevailing party." While it would seem logical that the prevailing party in a URS determination suspending all domain names would be the trademark owner complainant, and the prevailing party in a URS determination denying a suspension of all domain names would be the domain name registrant -- what would happen in the event of a split determination? Would the fee be refunded to the parties proportionate to the number of domain names in dispute?

(While I'm not aware of any split determinations in URS cases, it arises occasionally in UDRP proceedings, so there is no reason why we won't eventually see it happen in the URS system.)

In any event, it will be interesting to see when, if ever, a domain name registrant actually submits a Response Fee in a URS case. Because the URS provides (paragraph 1.2.6.3(b)) that "a pattern" of certain domain name registrations can demonstrate the required "bad faith" element of the URS, a registrant in a large URS proceeding might elect not to pay the Response Fee because it does not anticipate prevailing.

Finally, it is worth noting that the Response Fee is apparently only required if the domain name registrant submits a response -- and that a domain name registrant can nevertheless prevail in a URS case even if it fails to submit a response (because the burden of proof on the complainant is "clear and convincing evidence").

In that way, the URS is much like the UDRP: A trademark owner must, of course, pay a filing fee to obtain the possibility of a winning outcome, but a domain name registrant can do -- and pay -- nothing, yet still prevail.

Differing UDRP Decisions Show That Facts Matter

"Past performance does not necessarily predict future results." That's what the U.S. Securities and Exchange Commission requires mutual funds tell investors. But it's also true about domain name disputes.

Cases in point: In four recent proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), the operator of a large bank won two decisions but lost two others, despite a track record of having won more than 30 previous UDRP disputes.

The complainant was Webster Financial Corporation, and all four of the cases involved the same trademark (HSA BANK) and the same type of activity by the domain name registrant (pay-per-click sites with links for competing services). The differing decisions were all issued within a two-week period of time.

Here are the decisions:

At first glance, it might appear that the opposite outcomes reinforce a criticism of the UDRP: that the 17-year-old domain name dispute policy is unpredictable and subject to the whims of panelists. That would be a mistaken conclusion.

Rather, the different decisions can be explained by what seems to be a simple but essential factual difference: In the two cases that Webster Financial Corporation won, the disputed domain names were registered after the company's trademark rights arose; and in the two cases that Webster Financial Corporation lost, the disputed domain names were registered before the company's trademark rights arose. The issue is critical to the "bad faith" element of the UDRP.

As the panel in the <hssbank.com> case wrote:

Respondent registered the domain name a full year before Complainant introduced the claimed mark to commerce. Respondent therefore could not have entertained bad faith intentions respecting the HSA BANK mark because it could not have contemplated Complainant’s then non-existent rights in it either at the moment the domain name was registered or at any point in the succeeding year.

This conclusion, while not always consistently applied, is (as the panel noted in the <hsbank.com> case), the "consensus view" of UDRP panels, as described more fully in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition:

Generally speaking..., when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.

Whether the essential dates were overlooked by Webster Financial Corporation's attorney (the decisions indicate that the same attorney filed all four complaints) or whether the attorney argued that the panels should find bad faith despite the dates is unclear. But one thing is certain: Webster Financial Corporation's previous UDRP victories -- like those of any trademark owner -- do not guarantee ongoing success, given that the facts may differ.

Indeed, of Webster Financial Corporation's prior winning domain name dispute decisions, at least a dozen involved the same HSA BANK trademark -- and all had resulted in orders to transfer the domain names.

But the recent differing decisions are an important reminder that although trademark owners can often be encouraged by previous victories, they can't rely on them and instead must evaluate the merits of each dispute independently. Failure to do so could end a streak of winning UDRP decisions.

How a 'Defensive Registration' Can Defeat a UDRP Complaint

A company that registers a domain name containing someone else's trademark may be engaging in the acceptable practice of "defensive registration" if (among other things) the domain name is a typographical variation of the registrant's own trademark. That's the outcome of a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), a case in which the domain name in dispute, idocler.com, contained the complainant's DOCLER trademark -- but also contained a typo of the respondent's DOLCER trademark.

The UDRP complaint was filed by Docler IP S.à r.l. and related companies, all in Europe, that own the DOCLER trademark. According to the UDRP decision, Docler IP apparently uses the DOCLER trademark in connection with "a web platform with music, storytelling, and similar entertainment services."

The disputed domain name was registered by a Chinese company that "sells speakers and similar products under the name DOLCER," which is protected by an EU trademark registration.

Note the slight difference: The complainant's trademark is DOCLER, while the respondent's trademark is DOLCER. And, importantly, the respondent's domain name contains the complainant's trademark.

The UDRP panel had no trouble finding the domain name <idocler.com> confusingly similar to the complainant's trademark DOCLER, succinctly stating that the addition of the letter "i" to the domain name "does not obviate confusion." (Indeed, other UDRP decisions have found that inclusion of the letter "i" in a domain name that contains the complaint's trademark is irrelevant for purposes of confusing similarity. For example, in a dispute that included the domain name ambien-i.com, one panel said that the letter "i" is "a common prefix and suffix in domain names" that "may lead consumers to believe that a product or service may be ordered online" and therefore can "heighten the risk of confusion.")

However, a finding of confusing similarity is just one of three UDRP requirements, the third of which -- bad faith -- proved determinative. The panel in the idocler.com case found that the respondent had engaged in a "defensive registration" of the domain name and therefore had not acted in bad faith. As a result, the UDRP panel denied a transfer of the domain name.

So, what exactly, is a defensive registration?

According to email correspondence reviewed by the panel in the idocler.com case, "the Respondent has suggested that it registered the disputed domain name well prior to the commencement of this dispute in connection with its speaker business, to protect against typosquatting on its own DOLCER trademark." In other words, the respondent allegedly registered a variation of its own trademark as a domain to prevent a typosquatter from doing the same thing. The panel found this explanation acceptable.

(Interestingly, the panel reached this decision based on email correspondence submitted by the complainant, given that the registrant of the domain name did not submit a response. As I've written before, many trademark owners have lost UDRP cases even in the absence of a response, since there is no "default judgment" available under the UDRP. See: "The Most Embarrassing Way to Lose a UDRP Complaint.")

The idocler.com case is not the first UDRP case to address the issue of a defensive domain name registration. In a 2011 decision cited in the idocler.com decision, a panel described a defensive registration this way:

The Panel finds that the Respondent registered the Domain Name in 1999 as part of a policy of protecting itself against cybersquatters by the defensive registration of a large number of domain names similar to its own which might be used (if registered by others) to divert its customers or otherwise to damage its business.

In that case, the respondent was allowed to keep the domain name shoeby.com even though the complainant owned trademarks that contained the word "SHOEBY" -- because the respondent owned trademark registrations for SHOEBUY.

The doctrine of defensive registration in both of these cases seems to have limited applicability and would not protect a domain name registrant in just any situation. In these two decisions, the doctrine seems to have been applied only because the following factors also were present:

  • The respondent's trademark rights arose long before the domain name dispute.
  • The respondent has not used its domain name to target the complainant.
  • The record does not indicate that the respondent was aware of the complainant's trademark.

As a result, although a defensive registration may on occasion be applicable, the limited number of UDRP cases that have addressed the issue and the restrictions on the doctrine show that a true cybersquatter could not successfully assert that it registered a domain name to defend its own rights.

 

The GigaLaw Firm helps companies of all sizes protect their brands online, using domain name dispute policies – such as the Uniform Domain Name Dispute Resolution Policy (UDRP) – and other legal tools available to copyright and trademark owners on the Internet.