It has often been said that the first of the three requirements that a Complainant must prove under the UDRP- that the domain name is identical or confusingly similar to the trademark relied on by the Complainant- is something of a low threshold.
Certainly, there is not an overabundance of decisions where there has been a detailed analysis of why a domain name was found to be or not to be confusingly similar. A recent decision, however, where the panelist clearly did put a lot of effort into deciding this question and analyzing why the domain name was or was not confusingly similar was bet365 Group Limited v. Domains by Proxy, Inc. / Steve Prime (WIPO Case No. D2011-1242).
Although the case concerned another domain name as well as those dealt with here, the relevant domain names for the purposes of this case note were <365casino365.com>, <365poker365.com>, and <365wager365.com>. The Complainant’s trademark was BET365. The Complainant claimed they were confusingly similar to the trademark and the Respondent claimed they were not.
The panelist decided that the above domain names were not confusingly similar to the trademark. This was because, first of all, they all “look and sound quite different from the Complainant’s BET365 mark.”
Secondly, the panelist rejected the argument that “casino”, “poker”, and “wager” have a betting connotation and that the word “ bet” although absent from the domain names, could therefore be read into the domain names. That was so because the trademark was BET365 and the Complainant did not have any rights in 365 alone and it was a common everyday expression in the English language. Thus the panel could say: “Nor is the Panel satisfied in this case that any significant number of Internet users would regard these Domain Names as indicating a website of the Complainant. The word “Bet” is an integral part of the Complainant’s trademarks, and in the Panel’s view Internet users who are aware of the Complainant are unlikely to know it as anything other than “Bet 365”, with the “Bet” included.”
Moreover “casino” and “poker” were not synonymous with the word “bet”, because you can bet without going to a casino or playing poker, so they are not confusingly similar.
With respect to “wager’ the panel said:
“In respect of the Domain Name <365wager365.com>, the Complainant can argue that the Domain Name does include a synonym for the word “bet”. But in the Panel’s view, Internet users are generally savvy enough to appreciate that corporations with trademarks containing (as an integral part) an ordinary dictionary expression, do not normally substitute some synonym for that expression which neither looks nor sounds like it.”
None of the domain names were therefore confusingly similar to the trademark.
The panel had regard to Meat and Livestock Commission v David Pearce aka OTC/The Recipe for BSE (WIPO Case No. D2003-0645), and the observations of Lord Simonds in Office Cleaning Services v Westminster Window & General Cleaners (1946) 63 RPC 39, to the effect that small differences matter , when descriptive expressions were being used.
However, a separate domain name, <365bets365.com>, was held to be confusingly similar.
This decision is significant, because of the points made by the panelist that:
The wording of the domain names and the trademark have to be looked at to make the comparison and especially to see if either of them contain common or generic language;
The trademark to be used in the comparison is the whole of the trademark and not merely part of it, especially where the balance, in this case the “365” is a common expression; and
The test is whether a “significant number “of internet users would find domain name as relating to a website of the Complainant.