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Recent Case Notes & Commentary

Confusingly Similar – Using a Country Code as a Prefix to a Domain Name

It is useful to have this case as a handy illustration of a basic proposition for use when needed. The proposition is that putting a country code at the front of a domain name based on a trademark does not avoid confusing similarity with the trademark. The disputed domain name was <>, the trademark was PAUL FRANK and the country code for China is “cn”.

The panel disposed of the issue by saying:

“The Disputed Domain Name incorporates the Complainant’s PAUL FRANK trademark fully. The only reason for pause in coming to a conclusion of confusing similarity is the placement of the letters “cn” as a prefix to that trademark. The use of a country code as a suffix, in a subordinate position to the relevant trademark, has often been found to fail to distinguish a disputed domain name from a complainant’s trademark. However, is there the same likelihood of deception or confusion where the country code letters appear in front of the trademark?

The Complainant refers the Panel to the decision in, Inc. v A.R. Information & Publication Co., Ltd, (WIPO Case No. D2001-1392) in which a very distinguished three-member panel was satisfied that the prefix “thai” in <> did not distinguish a domain name containing a famous mark. The present circumstances are comparable to those considered in that decision, at least in this regard. The Respondent was plainly aware of the Complainant’s trademarks and sought by its website at the Disputed Domain Name to gain some advantage from them and the Respondent has adopted the Complainant’s PAULFRANK trademark in the Disputed Domain Name in such a manner that it is clearly recognisable as a distinct element. The Panel is therefore satisfied that the Disputed Domain Name is confusingly similar to the Complainant’s PAUL FRANK trademark.” 


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