The first is to show a trade or service mark. The second, the subject of this note, is the requirement that the domain name must be identical to or confusingly similar to the trademark relied on by the Complainant. It is sometimes forgotten that what really has to happen is to make a comparison between the two and to ask “Is the domain name the same as the trademark, or, if not, is it nevertheless similar to it and, if so, is it so similar as to be confusing?”
Deciding if two things are identical is pretty straight forward: either they are the same or they are not. The problem arises where you could say that the two are virtually identical, but not exactly identical; when that situation arises, most panelists who decide these cases say that ‘virtually identical’ means ‘identical’.
But what about confusingly similar? That is a harder question to answer and opinions differ on whether a particular domain name is confusingly similar to a particular trademark. As the test is applied by the panelist being put in the shoes of the bystander who will be confused or not, a lot of the decisions made on this subject are very subjective. A recent decision that seems to go a long way in the direction of deciding in favour of there being confusing similarity is Boris Johnson v. Belize Domain WhoIs Service Lt, (WIPO Case No. D2010-1954).
This case concerned the famous Mayor of London, Boris Johnson who had the domain name <backboris.com> that he used in 2008 in his campaign to be elected , but he omitted to renew it and now sought to get it back from the Respondent who had picked it up when it became available. Mr. Johnson did not have a registered trademark in his own name so he had to show an unregistered trademark and he was able to convince the panelist who decided the case that he did have such a trademark. But the trademark he was able to demonstrate he had was BORIS JOHNSON and not BACKBORIS. So he then had to show that the domain name <backboris.com> was identical to the trademark BORIS JOHNSON. Obviously, this was not so. The second string to his bow was to argue that the domain name was confusingly similar to the trademark.
So, was the domain name <backboris.com> confusingly similar to the trademark BORIS JOHNSON? Was it similar? Was it confusingly similar? What do you think?
The panelist said it was a ‘closely balanced question’, which seems something of an understatement. He first said that to answer the question, you could look at ‘the relevant public’ because it seems that if there is a test of whether people are confused, you could ask: which people? If that is a reasonable question the answer could well be: the people who are confused are the people who are likely to be faced with this quandary. Accordingly, the ‘relevant public’ could be looked at to decide the vital question: would these people be confused, even if other people would not be confused? In any event the panelist who decided the case was of the view that the relevant public could be considered.
That being so, the panelist then decided that Boris had shown that ‘a relevant segment of the public’ would associate the domain name <backboris.com> with him, Boris Johnson or, in trademark terms, BORIS JOHNSON. In other words, part of the relevant public would say that <backboris.com> was similar to BORIS JOHNSON and would be confused into thinking that <backboris.com> was referring to BORIS JOHNSON.
Three reasons were given why the conclusion was that the public would associate the domain name with Boris.
(a) his campaign was closely associated with the political slogan ‘Back Boris’; (b) he actively uses the similar domain name <backboris.co.uk>; (c) and because Boris Johnson is often known by his somewhat distinctive first name, “Boris.”
Describing it as a ‘close case’ the panelist left it at that.
It is an interesting decision and as said above seems to go a long way in finding confusing similarity. Is the expression ‘back boris’ really similar to Boris Johnson? Similarity is usually judged by the number of common features in the two or more objects being compared; here, the trademark has no ‘back’ and the domain name has no ‘Johnson’, so there are differences between the two. And would a reasonable bystander seeing ‘back boris’ think that it must be referring to Boris Johnson rather than another person named Boris? Why must a reference to Boris be taken as a reference to Boris Johnson?
As with all such cases, many such questions arise. Is it up to you to make a decision.