Everyone familiar with the UDRP knows that the first question to be decided is: is the domain name identical or confusingly similar to the trademark on which the Complainant is relying? It can be either, but it must be one or the other or the claim will fail. Sometimes the answer is clear, but sometimes it is borderline. The recent decision in Jazz Basketball Investors, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Big Shen, Joan Bristol ,WIPO Case No. D2017-0031 (March 8, 2017), is one such case where the Panel found that there was confusing similarity, but where opinions might differ on this issue. As always, it must be remembered that UDRP decisions are not precedents, but it is useful to see how panellists have handled tricky issues.
The Complainant claiming the domain name in this case was the owner of the franchise of the Utah Jazz team in the United States National Basketball Association (NBA). It had a trademark for UTAH JAZZ which it had been using for 30 years. It also had its own domain name, <utahjazzstore.com> which it used for a website to sell Utah Jazz goods and apparel.
The Respondent had registered the domain name <jazzbasketballteamshop.com> which it used for a website that it falsely called "The Official Store of the Utah Jazz Authentic Utah Jazz Jerseys, Hats, Apparel and more" and sold goods branded with the UTAH JAZZ trademark.
One might wonder how a basketball team in Utah came to be called Jazz.
When one thinks of the word ‘Utah’, images such as the Rocky Mountains, Salt Lake City, and Mormons may spring to mind. Those unfamiliar with basketball would probably not connect ‘Utah’ with ‘Jazz’, a word more synonymous with the southern city of New Orleans because of its connotations with music.
However, when the original New Orleans basketball team loaded the trucks and relocated to the state of Utah, they took the ‘Jazz’ name with them, giving birth to one of the more unusual pairings between a city and moniker in professional sport. While unable to overcome Michael Jordan and the Chicago Bulls in their quest for an elusive championship during the 1990s, the Utah Jazz franchise, as will be seen, did have a recent win under the UDRP. It succeeded in winning the domain name.
But to get to that final decision, it had to win on the first point under the UDRP: was the domain name <jazzbasketballteamshop.com> identical or confusingly similar to the trademark UTAH JAZZ as was claimed by the Complainant?
Was it identical? Clearly, no.
Was it confusingly similar? First, was it similar? Yes, there is one similarity, which is that the word “jazz” appears in both the trademark and the domain name. You may think this is not much of a similarity, but let us assume the domain name and the trademark are, to that extent, similar. But are they confusingly similar? Would an objective bystander, looking at the two, think that the jazz basketball team shop identified in the domain name was referring to Utah Jazz, an expression that makes no reference to basketball, a team or a shop.
The test for answering that question has always been to apply a straightforward visual or aural comparison of the trademark and the disputed domain name. If the trademark and disputed domain name either look or sound close enough, to the point where a web traveller would be confused about whether the domain name was invoking or was clearly associated with the trademark, this would be enough for a Panel to find confusing similarity and, hence, a finding for the complainant on this element.
It should be added here, because it is important, that it has also been generally understood that when making the comparison you do not look at the website to which the domain name leads or at any other extrinsic or outside evidence. That is important in the Utah Jazz case, as if you went to the website at the disputed domain name, it would be blindingly obvious to anyone that the domain name owner had deliberately created the fiction that it was the official site of the Utah Jazz team and that when it registered the domain name <jazzbasketballteamshop.com>, it meant the official basketball shop run for supporters of the Utah Jazz basket ball team. But is that conclusion all so obvious, or is it open at all, if you are not permitted to look at the website, but only the text of the domain name and the trademark? Also, are you permitted to look at other outside evidence, such as the fame of the trademark and, consequently, the fame of the goods and services being provided under the trademark, in this case the basketball team?
To assist in determining whether the threshold has been met in this case, let’s compare the trademark and disputed domain name:
As we have said above, there is a little but not much similarity between the two terms. But is the similarity a confusing similarity?
One view would be that this comparison appears to emphasise, rather than diminish the differences between the two. In any event, taking them together, and looking at nothing else, it could be said that the domain name is not referring in any way to the entity known as UTAH JAZZ or anything in Utah. Why then, should anyone think that the domain name was referring to the Jazz team in Utah?
The alternative view probably gives us the answer. That is the view of the distinguished panellist who decided the case and found for confusing similarity. He found that "jazz" is “ the first and distinguishing element of the disputed domain name”. That is of course true, and adding the words "basketball team shop" would, as the Panellist said, “ increase the likelihood” that consumers would think the disputed domain name was referring to the Jazz basketball team in Utah.
Less persuasive, perhaps, is the value of the decision cited, Supercell Oy v. WhoisProxy.com Ltd / Jordan Rash, Application Automation LLC, WIPO Case No. D2015-1445) where it was held that the domain name <clashbot.org> was confusingly similar to the trademark CLASH OF CLANS, because “clash” was the first word in the domain name. That is true, but the <clashbot.org> domain name contains 3 letters following the trademark, whereas the <jazzbasketballteamshop.com> domain name has18 letters after the trademark and “jazz” does not dominate the whole of the domain name, which is quite a difference.
The panellist also relied on another principle of long-standing and noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions at <http://www.wipo.int/amc/en/domains/search/overview2.0, namely that generic or descriptive words tacked onto a trademark does not avoid confusing similarity and may enhance it. This led the panellist to say:
"The added descriptive words “basketball team shop” serve to increase the likelihood that consumers would associate the disputed domain name with the famous basketball team and compound the confusion thereby created."
We would say therefore that, on balance, the overall impression created by the <Jazzbasketballteamstore.com> domain name is that it purposefully creates an association in an Internet user’s mind that the website was connected with the Utah Jazz franchise. What influences us is the uniqueness of the ‘Jazz’ name and therefore the risk that Internet users would associate a domain name containing ‘jazz’ and ‘basketball’ with the basketball franchise.
This conclusion, in our view, depends on the trademark being famous, as the Panellist clearly felt was the case; the trademark had, after all, been in use for 30 years. Indeed the panellist uses the word “famous” which seems pivotal to the decision.
Would it have been any different if the Jazz team in Utah were not famous or well known? Why, if the team were not famous, would an internet user assume that the domain name referred to anything in Utah at all.
Two things emerge from this decision. The first is that every case depends on its own facts. That sounds like a cliché but it is shown to be true in every case.
The second is that there must be some cases where some extrinsic evidence, such as the fame of the trademark or the goods and services sold under it, may be looked out. In the present case, although it is debatable that the identical or confusingly similar threshold test was met on a strict comparison between the domain name and the trademark, and having regard to nothing else , the correct decision was nonetheless arrived at by having regard to extrinsic evidence, such as the fame of the trademark.
But, as always, what do you think? Would the disputed domain name elicit confusion for an Internet user? If so, is it only be because the trademark and the business run under it are famous? If so, in what cases may you use evidence of fame?