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Recent Case Notes & Commentary

Confusingly Similar – “Sex” Added as Suffix to Trademark

This is another useful case to have to use when necessary to prove a point on what may be confusingly similar and what might not be so.

The disputed domain name was <>, building on the trademark OLX and adding “sex” as a suffix”.

The question was whether the domain name was confusingly similar to the trademark despite the fact that the domain name did not consist solely of the trademark, but had had added to it as a suffix the word “sex”. The panel found that it was and for the following reasons:

“The disputed domain name is <>. The disputed domain name contains the Complainants trademark OLX in its entirety with the added suffix “sex” and the generic and functional top level domain name “.com”.

When determining whether a domain name and a trademark are identical or confusingly similar, the gTLD shall typically be disregarded.

The question is therefore if the addition of the suffix”sex” renders the disputed domain name dissimilar from the Complainant’s registered trademark.

In a large number of previous decisions, UDRP panels have found that the fact that a domain name incorporates a complainant’s registered mark is sufficient to establish identical or confusingly similarity for the purpose of the Policy, despite the addition of other words to such marks (Oki Data Americas Inc. v. the ASD Inc., (WIPO Case No. D2001-0903) and CSC Holdings, Inc. v. Elbridge Gagne, (WIPO Case No. D2003-0273).

The Panel finds it established that the trademark is widely known and that the ownership belongs to the Complainant. The Panel further finds that the suffix “sex” adds little to the overall impression of the disputed domain name. Internet users are very likely to assume that the addition of the word “sex” to the trademark signifies a website associated with the Complainant. The Panel therefore finds that the addition of the term “sex” does not diminish the similarity between the disputed domain name and the Complainant’s trademark.

The disputed domain name must therefore be considered confusingly similar to the Complainant’s registered trademark. The Panel holds that the Complainant has established the first element of the Policy, paragraph 4(a).” (emphasis added).

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