Complainant, Wiluna Holdings, represented by John P. Sullivan of Volpe and Koenig, P.C., Pennsylvania, USA attempted to acquire the domain name <clips4all.com> from the Respondent Michael Stadlin / IMS Internet Management Services GmbH.
The Complainant outlined its rights as follows;
“Complainant is the owner of the CLIPS4SALE.COM and CLIPS4SALE marks, used in connection with adult-oriented entertainment media including downloadable film clips, photographs, musical performances, and more. Complainant has used these marks for this purpose since July 2003, and has since registered both the CLIPS4SALE.COM mark (Reg. No. 3,508,680 filed Jan. 27, 2006; registered Sep. 30, 2008) and CLIPS4SALE mark (Reg. No. 3,554,200 filed Jan. 30, 2006; registered Dec. 30, 2008) with the United States Patent and Trademark Office (“USPTO”).”
As mentioned above the domain name in dispute is <clips4all.com> which is not identical to its CLIPS4SALE mark, so on the basis of finding the domain name confusingly similar the Complainant argues; “Respondent has merely substituted the term “sale” for the term “all” in the domain name.”
The Uniform Domain Name Dispute Resolution Policy (UDRP) provides a threshold test for determining whether or not a domain name is identical or confusing similar. The test involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
This is a bit more difficult to show when all of the words in the mark could be said to be descriptive like the in the present case. Additionally, application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.
I suppose that on a visual and perhaps even aural comparison of the domain name and the trademark “CLIPS4SALE” and “CLIPS4ALL” are confusingly similar, but what about the conceptual and overall commercial impression of the domain name; in the minds of a consumer could the domain name be said to be confusingly similar?
The Panel clearly took this into account when making its decision stating;
“the Panel also notes that Complainant’s trademarks are composed only of generic terms. In the case of HomeVestors of America, Inc. v. Cristino Chico FA904273 (NAF April 2, 2007, finding the Complainant owned the name WE BUY UGLY HOUSES and the disputed domain name was I SELL UGLY HOUSES), the Panel held that the common part of both names, namely “ugly houses”, was generic and the similarity was denied. See also RevZilla Motorsports LLC v. Tom D’Azevedo, FA1304001496506 (finding that “there is no confusing similarity where, as in this case, the two names have a suffix in common and one moreover that is also a dictionary word, but no similarity between their prefixes”). In the present case, both trademarks are composed of generic terms or at least terms of low distinctively with regards to the designated services. These types of trademarks have low distinctively and their range of protection is very narrow.
Therefore, the fact that the prior trademarks and the disputed domain name differ by their suffixes “sale” and “all” could be sufficient to distinguish them.”
In the <iselluglyhouses.com> dispute referenced by the panel, it was determined in that case that “the phrases ‘we buy’ and ‘I sell’ are different in appearance, in meaning, and in purpose so they are not confusingly similar.”
In could be said that in regards to “CLIPS 4 ALL” and “CLIPS 4 SALE”, on first sight, it would most likely suggest something different in the mind of a consumer.
The Panel In the present case decided to analyze the other two elements in order to help him come to a decision but could just as well of found that the domain name was NOT confusingly similar to the Complainant’s trademark.
The first element of the UDRP is not simply a test of rights, and Complainant’s need to be aware that if the domain name in dispute is not identical to their trademarks a deeper knowledge of the UDRP requirements is needed. Careful consideration should be given to whether the appended terms – rather than reinforce the connect with your mark – actually distinguish the domain from your mark. This is even more so when the mark is a relatively weak non-distinctive term such as descriptive or generic terms. People are attracted to descriptive domain names for this very purpose so the completion for them is high, therefore small differences such as the ones in this case can make all the difference.