“IDENTICAL” IN STOP PROCEEDINGS
IVAN HOFFMAN, B.A., J.D.
With regard to domains with the top level of .biz, when a claimant (“Claimant”) files a claim against a domain name registrant (“Registrant”), the Claimant must prove, among many other elements, that the domain is “identical” with a trademark or rights in a trademark claimed to be owned by the Claimant. Disputes about the resolution of these .biz claims are handled under the “Start-Up Trademark Opposition Policy (“STOP”) proceedings.
There are many, many other issues involved in STOP proceedings but for the purpose of this article, I will discuss only the requirement that the domain and the mark be “identical.”
Under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), a domain registration can violate the rights of a Claimant if the domain is either “identical or confusingly similar” to the Claimant’s mark. Thus, under UDRP the rights of a Claimant are much closer to the issues of likelihood of confusion that govern the law of trademark infringement in general. Panels must make this threshold decision about whether or not, in a given context, the use of a particular domain is likely to confuse a potential visitor to the site.
However, in STOP proceedings, the domain must be an exact match to the Claimant’s mark and if it is not, the Claimant will have failed to sustain its burden of proof in this regard. The Policy states that the Claimant has to prove, among other elements that:
Thus, “identical” would seem an easy determination to make and yet, like many things in the law, easy is not always so.Your [Registrant’s] domain name is identical to a trademark or service mark in which the Complainant has rights;
The standard for “identical” is not necessarily precise equivalence. In METRO SB-Handels AG v. Internet Securities, the domain was “budget.biz” and the registered trademark was for a design mark featuring the word “budget” within a design. The .biz TLD is ignored in most instance (but see discussion below). The Panel stated:
The Metro Panel stated that the Qtech Panel found that the decorative aspects of the trademark were “minute or wholly insignificant” and could thus be disregarded for purposes of the “identical” requirement. However, the Metro Panel distinguished the Qtech case from the one before it, saying:The domain name is not precisely identical to Complainant’s trademark as registered. As described in paragraph 4.5 above, the registered mark is a composite mark featuring the word “budget” in a distinctive font. [emphasis added] Complainant has produced no evidence of any use by it of the trademark otherwise than in that form. The question remains however, as to whether or not the mark should be treated as identical to the domain name for the purpose of these proceedings.
As pointed out by the learned panelist in Qtech Business Systems Pty Ltd v. Coldwell Banker Burnet,[citation omitted]“there should be identity between marks only when an average consumer would regard them as the same, in the sense that any differences, whether or addition, omission or modification, were “minute or wholly insignificant”.”
While finding that the requirement was arguably met, The Panel ruled against the Claimant on other grounds.The position in the present case is similar but not the same. In the Qtech Case, the trademark was “Qtech”, an invented word having no obviously descriptive meaning. The word was, of itself, prima facie distinctive as a trademark. The position here is different. The word in question is a common English word widely and generically used over a range of goods and services including those for which Complainant’s marks are registered. Any distinctiveness which the mark may have, must derive either from the added decorative material and the distinctive font, or from a reputation derived from extensive use of the mark. [emphasis added] There is no evidence of the latter. Accordingly, in considering whether or not the mark and the domain name are identical, due regard must be had to the added matter and the distinctive font.
The Panel in Jorgen Kruuse A/S v. Donna Lawhorn faced the same issue about design marks versus domain names and cited several cases holding that such differences were insignificant and thus the requirement was met in those cases. The domain, buster.biz, was otherwise identical to the Complainant’s rights in the design mark “buster.” While stating that the differences were not sufficient to make the complaint fail on this basis, here too the Panel ruled against the Claimant on other grounds.
However, in Asociacion de Usuarios de Internet v. WorldWide Media Inc., the domain was “internet.biz” and the Claimants claimed rights in the graphic trademarks for “Internet” and “Internet ’99.” The Panel cited Respondent’s [Registrant’s] description of the graphic marks:
The Panel concluded that the marks and the domain were not identical. By implication, the Panel decided that the differences were more than merely minute or wholly insignificant and that the average consumer would not likely regard them as the same.“The trade mark claimed consists of a geometrical figure of a trapezoid formed by a group of 36 parallelograms, six of which are on its base and six on its height, all of them being dark; in the inferior part of this figure and crossing it on top of the inferior line, designation “INTERNET” is depicted in big sized lower case letters of thick outline and, finally, on top of the above there is another oblong figure also composed of a series of geometrical squared figures, of which the ones occupying the exterior part are partially cut by the edge of the figure where they are inserted”.
Further, in The Boots Company Plc v. Challenge Services, Inc. (CSI), the Panel stated:
The Panel decided the case against the Complainant on other grounds and did not make a finding as to whether or not in this instance the domain and the mark were “identical.”The Domain Name at issue is <boots.biz>. Complainant is the holder of registered trade marks for stylized versions of the word “boots”. As emphasized by this Panel in Cantiere Nautico Cranchi S.R.L. v. Rapier USA, Inc.,[citation omitted], design elements cannot be part of a domain name which only consists of letters and numbers. The same is true for stylized versions of a word. Yet, the Domain Name at issue <boots.biz> is confusingly similar or even identical to the word part of the registered stylized versions of the word “boots” of Complainant. Nevertheless, the STOP Policy imposes an affirmative burden on the Complainant to establish that the disputed domain name is identical to Complainant’s trade or service mark. The standard of confusing similarity found in the Uniform Domain Name Dispute Resolution Policy (UDRP) was specifically excluded from the STOP Policy as it is a dispute policy for start-up .biz registrations and was put in place to address only the most clear-cut cases of abusive domain name registrations.
In Netdoktor A/S v. Jens Nielsen, the domain was netdoctor.biz and the Complainant claimed rights of trademark in the mark NETDOCTOR.CO.UK. The Panel stated:
Moreover, as indicated above, while the top level domain, .biz, is generally ignored for purposes of determining “identical,” in the instance where the .biz is actually part of the claimed mark, it may be relevant.The STOP, Paragraph 4(a)(i), requires that the domain name be identical to a mark in which the Complainant has rights. The wording of the STOP is clear, and dissimilarities between the domain name and the mark should therefore only be accepted to the extent that technical requirements of the domain name registration system render such dissimilarities necessary….
In Osborne Clarke v. Blacker Media, the domain was “games.biz” and the Claimants had rights in the trademark “gamesbiz.” The Panel ruled that the domain and the trademark were not “identical.” The Panel stated, in rejecting Complainant’s argument that they were:
Following the logic of the Complainant’s argument, one would conclude that “world” is identical to “worldcom” and that “fishing" is identical to “fishingnet”. The Panel does not agree.
STOP proceedings present different challenges to Claimants than do UDRP proceedings. If you are trademark owner or claim rights in trademarks, or if you are a registrant of a .biz domain, you must become aware of the varying requirements and legal issues involved in such matters.
The Internet continues to evolve.
© 2002 Ivan Hoffman. All Rights Reserved.