The Complainant still has to go on and show that the domain name in question is identical or confusingly similar to the trademark relied on. In some cases submitted to the UDRP process there is little or no argument on that issue. Leaving identicality aside, there are several difficult questions that really arise when confusing similarity is being considered. Some of them are:
What is the test? Is it enough to show that one or two people would find the domain name confusingly similar to the Trademark or must the Complainant show that everyone or perhaps people in general would find it so?
Does the Complainant have to show that people definitely would find the domain name confusingly similar to the trademark or that they might possibly find it so or would on the balance of probabilities?
How do you apply the test? For instance, is it that the panellist deciding the case would find the two confusingly similar after he or she is notionally placed in the position of a reasonable bystander?
How much may the reasonable bystander be presumed to know before coming to the conclusion of confusing similarity?
A panellist recently grappled with this issue in San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., (WIPO case no. D2009-1545), albeit in a concurring Opinion. In a three person panel, the panelist in question agreed with his colleagues that the Complaint failed because the Complainant had not made out the ground of registration and use in bad faith. However, the panelist wrote a separate decision to the effect that he was also of the view that the Complaint failed for the additional reason that the domain name was not identical or confusingly similar to the trademark.
The two domain names were <sandiegohydro.com> and <sdhydro.com> that the Respondent had registered before the Complaint had applied for and had registered its trademark, SAN DIEGO HYDROPONICS & ORGANICS, with the USPTO. Both of the Complainant and the Respondent conducted hydroponic businesses in San Diego.
The majority had found that the domain names were confusingly similar to the trademark, when “SD” was taken to mean San Diego and “… the term “hydro” (was) used on both parties’ websites as a shortened version of the word “hydroponics”. The minority disagreed, for the domain names did not necessarily invoke the Complainant’s trademark as they omitted “organics” entirely and shortened San Diego to “SD” and “hydroponics” to “hydro”. In particular, it was not appropriate to proceed, as the majority had, on the basis that the Complainant had been “promot[ing] itself on its Internet site as ‘San Diego Hydro’ and ‘SD Hydro,’” for it had not in fact claimed any common law rights to a trademark different from the registered one on which it relied solely and which included all of the above words. Put perhaps in different words, why would anyone assume, looking at the domain names, that they were invoking the Complainant’s hydroponics business rather than “hydroelectricity, hydrology, hydrodynamics, hydrocarbons, or any of the scores of other terms that share the common prefix “hydro-”.”? The inference is that they would not.
The minority also took issue with the majority’s conclusion as a matter of fact that the Complainant had been “promot[ing] itself on its Internet site as ‘San Diego Hydro’ and ‘SD Hydro,’” for that was based on the Panel’s own research, not on the Complainant’s evidence.
The minority therefore, in effect, builds its case on the foundation that the domain names were not confusingly similar to the trademark that the Complainant relied on, irrespective of whether they were confusingly similar to a different trademark that the Complainant did not rely on.
Your editor suggests that this approach could be very useful in other UDRP cases.