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Recent Case Notes & Commentary

IP V. IPR: IS CONFUSINGLY SIMILAR ENOUGH FOR A COMPLAINANT TO PROVE?

Bert the Spider, DBA IP Illustration v. Nilanshu Shekhar / KAnalysis Consultants (P) Limited


FORUM Claim Number: FA2307002054361


September 4, 2023


RATIO


If the Complainant fails to satisfy all the three elements under Paragraph 4(a) of the UDRP, being (i) the domain name of Respondent is identical or confusingly similar to the trademark of the Complainant, (ii) that the Respondent had no rights or legitimate interests in the domain name, and (iii) that the domain name was both registered by the Respondent and was being used in bad faith, a domain dispute action will not succeed. Failure to establish even one of those elements will defeat the claim for the domain name.


As sometimes happens, the Panel found in this case that the domain name was confusingly similar to the trademark (and that the Complainant had succeeded on that point), but that the Respondent had a right or legitimate interest in the domain name and had not registered and used the domain name in bad faith. Therefore, the Respondent succeeded and was entitled to keep the domain name.


BACKGROUND


Bert the Spider, DBA IP Illustration (the “Complainant”) was the registered proprietor of the trademark IP ILLUSTRATION with the USPTO. The trademark application was filed with the USPTO on September 21, 2015, with a prior use claim since June 8, 2007. The trademark received registration on June 21, 2016.


The Complainant had also held its own domain name registration for <ipillustration.com> since 2004, and since 2007 it had been engaged in providing patent, design and trademark illustration services.


The “Respondent, KAnalysis Consultants (P) Limited was engaged in the same industry as the Complainant, providing patent, design and trademark illustration services since 2007, and had been providing its services to patent law firms, companies, and individual inventors since 2010. Further, the Respondent had also registered its own domain name <ip-illustration.com> in 2015, but following communications from the Complainant, registered the domain name <ipr-illustration.com> in June, 2016 instead.


The Complainant brought the domain dispute action against the Respondent for transfer of the domain name <ipr-illustration.com> from the Respondent to the Complainant.


The Respondent contended that trademark rights on IP ILLUSTRATION could not be claimed since both IP and ILLUSTRATION were generic terms that refer to the class of products and services that they identify. The Respondent has also contended that in order to avoid any confusion, it has mentioned contact details and details about its US company “KA Filing LLC” on its webpage.

Identical or confusingly similar


The Panel first found that the domain name <ipr-illustration.com> was not identical to the Complainant’s registered trademark IP ILLUSTRATION. It seems fairly clear that the reason for that finding was that there are two additional features in the domain name that are not in the trademark, namely the letter “r” and the hyphen before the word “illustration”. Thus, the domain name was slightly different from the trademark and therefore could not be identical to it.


However, despite this, and if not identical, was the domain name nevertheless confusingly similar to the Complainant’s trademark? The Panel held that it was confusingly similar to the trademark. Again, it was fairly clear why that conclusion was reached. The domain name and the trademark were obviously similar because they both include the letters “ip” and the word “illustration”. Looking at both of them, internet users could well conclude that the domain name may have been referring to or invoking the trademark. Thus, internet users could well be confused between these two expressions.


This was enough to get the Complainant to first base, because although the domain name was not identical to the trademark, it was confusingly similar to it and that is all that the Complainant had to show under this first element.


The Complainant had thus satisfied the first element.


But that was only one of the three criteria that the Complainant had to prove. It had got to first base, but would it get to second and third base as well?


Rights or legitimate interests


The Panel then had to decide whether the Complainant had made out a prima facie case that the Respondent lacked rights or legitimate interest in the disputed domain name <ipr-illustration.com>. On that issue, the Panel found that the Respondent had not made out that prima facie case.


Indeed, or “on the contrary” as the Panel put it, the Respondent had done more than show that it had a prima facie right or legitimate interest in the domain name, as it had shown that it had every right to the domain name because its conduct in the use of the domain name was bona fide. It was bona fide because it was using the domain name for the purpose of providing illustrations, drafting and other IP services for clients and had been doing so since the year 2007 and for other professionals since 2010.


Moreover, it had shown this by the fact that it registered a separate domain name <ip-illustration.com> in 2015, prior to the Complainant’s registration of the trademark IP ILLUSTRATION and had subsequently registered the disputed domain name <ipr-illustration.com> after communication with the Complainant.


Further, it had included its contact details and details of its US company “KA Filing LLC” on its webpage. Taken together, these aspects were in good faith and a bona fide attempt to avoid confusion between the two service providers. They showed that the Respondent had not registered and used the disputed domain name “in reference to Complainant’s trademark.” That gave the Respondent a right to the domain name and a legitimate interest in it.


The Panel therefore found that the Respondent was making a fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant. This was an express ground under Policy ¶4(c)(iii) that gave rise to a right or legitimate interest in the disputed domain name and the Respondent had therefore succeeded on that point.


Up to this point, the Complainant had thus made out one of the three elements it had to show, but not the second. It was thus difficult to see how the Complainant could succeed overall.

Registration and Use in Bad Faith


On this, the third element under the Policy, the Panel decided that there was simply no bad faith. There were several reasons for this. First, it had already been found that the Respondent had acted in good faith under “rights and legitimate interests” and if that were so, it was difficult to see how the Respondent had registered and used the domain name in bad faith.


Next, the Complainant’s claim that the Respondent sought to cause confusion and deception among consumers, and to profit from the Complainant’s reputation, was not the case. The Respondent had also been independently conducting its business, which again showed good faith and not bad faith.


Moreover, the words that formed the Complainant’s trademark, “IP” and “ILLUSTRATION”, were generic and it was therefore difficult to say that the domain name was created to copy or trade on it. See Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term).


Also, the Respondent’s earlier domain name <ip-illustration.com> was registered prior to the Complainant’s IP ILLUSTRATION trademark. Factoring in all these features, the conduct of the Respondent did not amount to bad faith. The Complainant had therefore failed to establish that the disputed domain name had been registered and had been used in bad faith, or , indeed that it had established either of those tests.


The Conclusion


Having failed on two out of the three elements that it had to prove under Paragraph 4(a) of the UDRP, the Complainant had failed to prove its case.


REFLECTIONS ON THIS DECISION


There is no doubt that the Panel carried out a scholarly application of the detailed provisions of Paragraph 4(a), (b) and (c) of the UDRP and the decision is therefore a valuable one in that regard.


As our policy at Domain Times is to encourage debate and discussion of decisions made under the UDRP, we would just add a few issues for you to think about. They are:


(i) As the earlier domain name <ip-illustration.com> had been registered by the Respondent in 2015, prior to the Complainant’s registration of the trademark IP ILLUSTRATION and the Complainant’s trademark was applied for, claiming a use since June 8, 2007, could the Respondent nevertheless have been aware of the existence of the trademark before registering the disputed domain name?

(ii) As the Respondent changed its domain name from <ip-illustration.com> to <ipr-illustration.com> in 2016, pursuant to communication with the Complainant, does this suggest that the Respondent may have aware of and acquiesced to the Complainant’s prior rights in IP ILLUSTRATION?

(iii) Could there be an argument that the Complainant had common law rights that had accrued to the trademark IP ILLUSTRATION by dint of its use since at least 2007.

(iv) As the terms "IP" and "IPR" may be used interchangeably by some, would you give credence to a view that the commercial community might be confused between the two, especially if "IP Illustration" and "IPR Illustration" were made search parameters on Google?

(v) If another similar case arose in the future, would you give any credence to the argument that, as the Respondent registrant of a domain name operated in the same industry as the Complainant trademark owner, the chances of confusion between the rival entities might well be greater.


These, of course, are considerations that might arise in a subsequent case and they will have to be considered on the facts of any such case that arises.


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