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Recent Case Notes & Commentary

Proving Trademark Rights and Confusing Similarity may not Always be Straightforward

Case No. D2019-1692

September 6, 2019

Usually, the first element of the UDRP – proving that a disputed domain name is identical or confusingly similar to a Complainant’s trademark, is usually the most straightforward of the three elements and it is sometimes referred to as a “low threshold.”. However, in another undefended case easily won by tobacco giant Phillip Morris, one is left to wonder if, had a response had been filed, they may have faced a tougher battle proving the first element.

The case at question concerned the disputed domain name <>. The Complainant, as party of their foray into smoke free tobacco products, sells products under and holds trademarks for the brand names HEET, HEETS and HEATSTICKS.

The Complainant argued that the disputed domain name was similar to its marks, since the term HEAT was phonetically similar to its HEET and HEAT marks. Adding the terms “e-” and “products” to the domain name are merely descriptive words, whose addition generally considered among panels as insufficient to avoid a finding of confusing similarity under the first element of the UDRP. Moreover, the Complainant argued that such terms would increase confusion, as the “e-” prefix generally refers to electronic products. Ultimately, the panel accepted this argument and found this element in favour of the complainant. Given the rest of the case indicated a pretty clear instance of cybersquatting, this was probably a reasonable result. The disputed domain name was clearly used by the Respondent to gain an unfair commercial profit by abusing the complainant’s trademarks and it was so found in favour of the Complainant.

Like determining whether these lines are parallel, proving a domain name is similar to a trademark can be a confusing process

However, had the case been defended, there may well have been a valid counter argument suggesting that “e-heatproducts” was not confusingly similar to the Complainant’s trademarks. “e-heatproducts” could be referring to all heating products more broadly, and not necessarily the Complainant’s, and that an Internet user would not confuse this with the Complainant. However, given the lack of response, and the aggravating evidence which clearly indicated an abusive use of the domain name, in the absence of a comprehensive response, the panel would be disinclined to give such an argument the time of day.

That said, while the findings under a single element of the policy may influence the findings in another, each of the three elements must be proved separately by the Complainant, and if they had their time again, a nuanced argument by the Respondent may have had a slim chance.


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