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Recent Case Notes & Commentary

Has President Obama Changed the Meaning of “Confusingly Similar”?

The case was Research In Motion Limited v. Georges Elias (WIPO Case No. D2009-0218), which concerned 111 domain names, many of which seem to have been invoking the famous Blackberry communications device, like <> and <>.

Some of them, however, instead of using the word Blackberry as part of the domain name, used the word Berry. Four of this latter group also invoked the name of President Obama, because, it was alleged, shortly after his inauguration he had said he was reluctant to give up his Blackberry.

The Complainant, as well as having the trademark BLACKBERRY apparently also has the trademark BERRY, (in Hong Kong and Taiwan but not in the US) also used to refer to its Blackberry product.

Thus it was argued that the domain names <>, <>, <> and <> were confusingly similar to the trademark BLACKBERRY, but not, apparently, BERRY.

The Panel accepted this argument, saying that:

“The addition of the surname “Obama” is, as such, suggestive of that episode (the episode of President Obama’s remarks about the Blackberry) and therefore of the Complainant’s BLACKBERRY mark. For this reason, the Panel finds that these domains are confusingly similar to the Complainant’s BLACKBERRY mark.”

This, of course is an interesting decision, as:

it relies on other evidence beyond the strict comparison of the words in the domain name and the trademark; and

assumes that the generic word “berry” would be taken to refer, not to berry as in fruit, but the BERRY trademark, or more precisely the BERRY trademark said to be an alternative to the trademark designating the Blackberry device, namely BLACKBERRY.

Of course, there were many other “blackberry” domain names at issue in the case and the attitude to the “berry” ones and particularly the Obama ones is inevitably influenced by the fact that the “blackberry” ones seem to invoke the well known BLACKBERRY trademark and the device.

Nevertheless, the use in the decision of the intention of the domain name registrant and the content of the websites to which the domain names resolved, should encourage dome debate.

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