Claim Number: FA2005001895951
July 31, 2020
The first element of the UDRP is often overlooked. Nevertheless, it is still a requirement that the Complainant prove that the disputed domain name is either identical, or confusingly similar to their trademark. While this is often dealt with swiftly, including the following dispute Hästens Sängar AB v. Jeff Bader / Organic Mattresses, Inc, sometimes there is more than meets the eye.
While Hastens ultimately failed because the Complainant was unable to prove the domain was registered in bad faith (as is not uncommon in cases in which the evidence does not point to obvious and intentional and cybersquatting), this important issue was seemingly glossed over by the Panel. Was the disputed domain name “comparetohastens.com” is actually confusingly similar to the Complainant’s trademark, HASTENS?
Obviously, the domain name contains the Complainant’s mark in its entirety, but does that make it confusingly similar?
In making its decision, the Panel seemingly ruled without dealing exclusively with that question. Instead it relied heavily on the WIPO Jurisprudential Overview 3.0:
in cases where a domain name incorporates the entirety of a trademark …, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing … the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element
While correct in pointing out that additional terms in a disputed domain name may certainly not prevent a finding of confusing similarity, in making their decision, the Panel did little more than cite a similar case featuring a “comparison” domain name.
However, the UDRP is not bound by precedent, and the panel did not actually grapple with the question of whether a reasonable person would actually confuse “comparetohastens.com” with the trademark HASTENS.
The respondent argued, that the additional term “compareto” expressly serves to distinguish the disputed domain name from the trademark, indicating to the reasonable internet user that it did not own the trademark, or alternatively, at the very least did not own the trademark.
Ultimately, this argument was not bought by the Panel, nor did it expressly deal with it. But keeping in mind that this element, like the other two, must be proved, given that the Complainant bears such a burden, do you think the right call was made?