This is a guest post by Paul Keating an attorney specializing in domain issues. As principal of Law.es, he provides legal advice to domain investors, registrars and service providers.
Law.es has offices in Barcelona and London:
Panelist Warwick A. Rothnie just released his “considered” opinion in Six Continents Hotels, Inc. v. Triptih doo (D2012-1600). I use “considered” loosely. The domain at issue was holidaysarajevo.com. The complainant was the owner of the “Holiday Inn” trademark and claimed that holidaysarajevo.com was so confusingly similar to its “Holiday Inn” trademark that it should be awarded to the complainant under the UDRP. The panelist complied but only after re-writing the first element of the UDRP so as to place the square plug in the preverbal round hole.
The dispute seems to have arisen out of a failed hotel franchising agreement which had been terminated by the complainant. The respondent had thereafter registered the domain name and used it to point to its own website. The respondent had apparently continued to use the Holiday Inn trademark or logo on its website.
Mr. Rothnie started out correctly stating: “On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.”
From there, however, he derails the Policy.
“The Complainant contends that the common element “Holiday” in its trademarks and the disputed domain name is liable to cause confusion. It also contends that the addition of the geographical name “Sarajevo” only promotes that tendency to confuse. In addition, the Complainant seeks to invoke the content of the website to which the disputed domain name resolved to support the risk of confusion. It cites various decisions of previous Panels said to support these one or more of these conclusions.
Given the nature of the comparison in question, however, the content of the website is not usually admissible in this context: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
As paragraph 1.2 of the WIPO Overview 2.0 also indicates, this requirement under the Policy is essentially a standing requirement. It is not necessarily directed only to issues of confusion about trade source. Rather, the objective is to prevent extortionate or opportunistic practices which harm the trademark owner or take advantage of the trademark owner’s rights. In that context, the Panel considers that the term “Holiday Sarajevo” in the disputed domain name could readily be understood by notional Internet users as a name which could well be used by the Complainant. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ proven trademarks.”
Even if the respondent had used the complainant’s marks on its website, such is insufficient to have the matter fall within the UDRP. The UDRP was created to deal with domain name disputes. It is founded upon concepts of trademark but as Mr. Rothnie correctly noted, typical trademark analysis is curtailed
Here, however, Mr. Rothnie takes that “curtailment” (which itself is nowhere to be found in the Policy) and expands it to assert that because the 1st element is but a loose measure of “standing”, it permits the panel to essentially shape the analysis to achieve a desired outcome – instead of the proper outcome.
We are all not privy to the actual filings. And, it may be that the respondent acted badly. However, massaging the Policy to fit this factual pattern does injustice to respondents and destroys the system created by the Policy. The most potentially damaging is that it apparently sets a trend that it is OK to go beyond the domain name and look to the underlying website but only when it suits the complainant. I have tried this many times in arguments in favor of respondents – most notably when the domain is conflicting but the actual use shows absolutely no conflict. All of these efforts have been rejected with comments indicating that such issues are taken into account with regard to the bad faith analysis. While Mr. Rothnie paid lip-service to this typically comment, he then proceeded to ignore it and find in favor of the complainant on the 1st element when it clearly was not the case.
In D2012-1600, the facts clearly showed a trademark dispute was independent of the actual Domain. As such, the dispute was equivalent to having a domain coolshoes.com with an underlying website that infringed upon the trademark rights of Nike. If anything, the complaint should have been denied and the parties referred to traditional litigation.”
