19
Nov/02

Confusingly Similar Sucks .com


Registrant didn’t show up and still prevailed in a UDRP brought by ASDA against the domain name ASDASUCKS.NET.   The rationale of the decision is that, when discussing the first prong of the 3 prong test, the panelist, Tony Willoughby (whom I hold in high regard), held simply that ASDASUCKS is not confusingly similar to ASDA. 

This not-shocking assertion contradicts several “sucks” cases which acknowledged that EXAMPLE and EXAMPLESUCKS could not possibly be confusingly similar.  However those panelists, confronted with “dirty” registrant who had registered multiple “sucks” domain names and were obviously shaking down complainants, deliberately bent the definition of “confusingly similar” in order to find against the “bad” registrant.

While I am not disturbed by the outcome in this case, I am troubled by the implication of the following language in the decision:

“What is meant by “confusingly similar”? In the view of the Panel, if the word “confusingly” is to be given any meaning, the expression cannot equate to “similar”. The Panel construes “confusingly similar” in this context to mean that the Domain Name, by reason of its similarity with the Complainant’s trade mark, is likely to lead to a substantial (i.e. not insignificant) level of confusion among Internet users.

What sort of confusion? A confusion in the minds of Internet users that the Domain Name is or may very well be a domain name belonging to the Complainant or licensed by the Complainant. This is consistent with the meaning of the term “confusingly similar” in the trade mark context (which is appropriate in that the Policy is expressly designed to protect the legitimate interests of the trade mark owners) and the Panel can think of no other type of confusion that could be said to apply.”

Maybe the (IMHO) not-so-great language of “confusingly similar” needs to equate to similar for now (and that’s how I tihnk it is interpreted for the most part).  If confusingly similar does in fact mean confusingly similar, then that suggests that every UDRP should include an analysis of the Polaroid factors (or the appropriate equivalent test of confusion) because even identical marks may not be confusingly similar.  And we know that the UDRP is not the place for a lengthy multi-factor analysis.

Maybe the “confusingly similar” language of the UDRP needs to be amended to “identical or visually, phonetically or connotatively similar.”

I would also like to throw in another plug here for an appellate process for the UDRP.

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