In our recent case note on Jazz Basketball Investors, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Big Shen, Joan Bristol , WIPO Case No. D2017-0031 (March 8, 2017), we discussed the difficulties in assessing the confusing similarity between a domain name and the trademark relied on by a complainant in UDRP proceedings. This is an important issue, as it is the first element that must be established in a UDRP claim and unless the complainant wins on this element, it cannot win the overall proceeding. We made the point that each case has to be determined on its own facts and it sometimes a narrow and finely balanced task to look at the domain name at issue and then compare it with the trademark the Complainant is relying on to see if the domain name is confusingly similar to the trademark. Since writing that case note on March 26, 2017 an interesting little URS decision has been released that is another example of the facts that panellists take into account to decide that the domain name is or is not confusingly similar to the trademark held by the complainant. (Although the decision is a URS case, the principle is the same, as the wording of the URS is the same as the wording of the UDRP on this issue).
The new decision is California Milk Processing Board v. Stephanie Hicks. It is a Forum case for a Final Decision under the URS. It is Claim Number: FA1703001724804, published on the Forum list of recent decisions on April 5, 2017. The point is quite a simple one. The Complainant’s trademark was GOT MILK. The Respondent registered the domain name <gotgoatmilk.com>, i.e. it took the Complainant’s trademark and inserted the word “goat” in the middle. The panellist held that , despite the addition of this word, the domain name was confusingly similar to the trademark.
Some observers looking at the domain name might have thought that it was referring only to goat’s milk and that it would lead to a website dealing only with that product, whereas the trademark covered milk in general. However, the panellist found that the domain name was confusingly similar to the trademark. As with all URS decisions, no lengthy reasons were given and the panellist expressed his decision as follows:
“The insertion of the word "goat" within Complainant's GOT MILK mark does not negate a finding that the domain name is confusingly similar to the mark”.
An interesting example. How would you have decided this if you were the panellist?
So far, then, we have got to the point where you could say from this decision that even after adding a word to the trademark, the domain name may still be confusingly similar. But be careful! Changing a single letter in the trademark may make the domain name NOT confusingly similar. This exact conclusion was reached in The California Milk Processing Board of San Clemente v. Domains By Proxy LLC/ Del Polkretis. WIPO Case D2012-2285 [1](19 December 2013). Clearly, changing one letter may change the whole meaning of the word, as it did in that case. We will leave it to the reader to study the precise reasons given in the decision, but readers may note as this stage that the majority summarised its decision by noting:
“The Panel majority concludes that an internet user confronted with this Domain Name is likely to be grinning or groaning, or nonplussed-not confused.”
The conclusion, once again, must be that each case will depend on its own unique facts.
[1] The Hon Neil Brown QC was one of the two panellists who constituted the majority in this decision.
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