WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PEC Intellectual Property Management B.V. v. Siberia International Productions Co., Ltd

Case No. D2013-1320

1. The Parties

The Complainant is PEC Intellectual Property Management B.V. of Amsterdam, The Netherlands represented by Notarbartolo & Gervasi S.p.A., Italy.

The Respondent is Siberia International Productions Co. Ltd of Bangkok, Thailand.

2. The Domain Name and Registrar

The disputed domain name <women-asia.com> (“the Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2013. On July 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 22, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2013.

The Center appointed Warwick Smith as the sole panelist in this matter on August 26, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant

The Complainant is a Dutch corporation which operates a well-known international modeling agency. The corporation was founded in New York in 1988, and subsequently opened offices in Milan and Paris. According to the material produced with the Complaint, the Complainant’s agency has launched the careers of a number of internationally known models.

The Complainant owns two Community Trademarks consisting of the following stylized versions of the word “Women”: Mark No. 5137112 and Mark No. 5137146.

Applications for both marks were filed on May 29, 2006, and the marks proceeded to registration on June 23, 2010 (Community Trademark No. 5137112) and August 23, 2010 (Community Trademark No. 5137146). Community Trademark No. 5137146 was registered in International Classes 9, 16, 35 and 41. Community Trademark No. 5137112 was registered in those classes and in classes 3 and 25. Neither of the specifications for which these marks are registered seems particularly apt to cover what one would expect to be the ordinary activities of a modeling agency – the Class 35 registration covering “Advertising; Business Management; Business Administration; Office Functions”, and the Class 25 specification for Community Trademark No. 5137112 (“clothing, footwear, headgear”) appear to come closest.

In addition, the Complainant is registered as proprietor of Community Trademark registrations of the mark WOMEN MANAGEMENT, and WOMEN DIRECT, each in stylized form with (respectively) the words “management” and “direct” appearing underneath the word “women”, and in much smaller font. The applications to register these marks were made on May 31, 2012, and they proceeded to registration on October 10, 2012 and November 28, 2012 respectively. In each case, the Class 35 registration was in the same terms as are set out above.

The Complainant also holds an international registration dating from September 2006, for the stylized mark WOMEN (registration No. 903739). The designated countries are Japan, Belarus, China, Republic of Moldova, Russian Federation, and Ukraine.

The Complainant operates websites at “www.womenmanagement.com” (registered January 21, 1999), and “www.womendirect.it” (registered January 20, 2009).

The Respondent and the Domain Name

The Domain Name was created on June 2, 2009.

The Complainant produced screenshots of the web page to which the Domain Name resolves (“the Respondent’s website”), taken on June 18, 2013 and July 17, 2013. As at June 18, 2013, the Respondent’s website consisted of a page headed “Women-Asia Agency”. Beneath that heading, there appeared a number of photographs, mostly of young women. Some of the photographs were accompanied by personal details such as height, hair color, figure measurements, etc, and in a number of cases the woman’s first name appeared below her photograph. Some of the photographs were not particularly distinct, but at least one of them was a photograph of a man, with the man’s first name superimposed on the photograph above the word “women”.

Prominently throughout the website, beneath most of the photographs, the word “women” appeared in lower case script (not similar to the script used in the Complainant’s Community Trademarks Nos. 5137112 and 5137146), with the word “Asia” in upper case lettering (but in much smaller print) beneath the letter “n” in “women”.

At the foot of the web page, there was a notice reading:

“Sorry for inconvenience.

Under Construction.”

There followed a contact email address, with telephone and fax numbers.

In very small lettering beneath the word “women”, there appeared the Respondent’s name and a Bangkok address.

The screen shot of the Respondent’s website taken on July 17, 2013 was in substantially the same format. The “Under Construction” notice still appeared at the foot of the Respondent’s website.

The Complainant produced with the Complaint a Site Profile for the Respondent’s website, printed from the website at “www.domaintools.com” on June 11, 2013. The “Meta Description” for the Respondent’s website, as listed on the DomainTools website, read:

“Find Meet Singles, Sex Toys and more at Women-Asia.com. Get the best of Adult Toys or Sex Dating Site, Browse our section on Adult Web Cam Chat or learn about Adult Chat. Women-Asia.com is the site for Meet Singles.”

The same page from the DomainTools website listed the following Meta keywords:

“meet singles sex toys adult toys women-asia.com”

The Complainant stated that there is no relationship between it and the Respondent that could give rise to any license, permission, or other right for the Respondent to own any domain name incorporating the Complainant’s WOMEN mark.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

1. The Domain Name is confusing similar to the trademarks in which the Complainant has rights, as the term “women” is entirely incorporated in the Domain Name (indeed it is the dominant feature of the Domain Name), with the addition of “Asia” only having the function of indicating a territory of interest. The addition of the expression “-asia” does not prevent the Domain Name from being confusingly similar to the Complainant’s trademarks consisting of or including women as the main verbal element. Internet users would be confused into thinking that the Domain Name is associated with the Complainant, and in particular with the Complainant’s business in Asia (the Complainant has ongoing activities in countries such as China and Japan). The Domain Name appears to be a localized sub-set of the WOMEN mark, and is likely to be confused with that mark.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name. There exists no relationship between the Complainant and the Respondent that would give rise to any license permission or other right by which the Respondent could own any domain name incorporating the Complainant’s WOMEN mark. The registration of the Domain Name, which was effected well after the Complainant had used, widely promoted, and registered its WOMEN marks, can hardly be attributed to coincidence. The Domain Name has been used with the clear intent of diverting consumers, and to tarnish the Complainant’s marks.

3. The Domain Name was registered and is being used in bad faith. The Respondent is attempting to capitalize on the Complainant’s marks and name, and hopes to mislead consumers into believing that the Domain Name is affiliated with the Complainant in order to attract Internet users to the Respondent’s website for the Respondent’s interests.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. What the Complainant must prove under the Policy - General

Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules requires the panel to:

“… decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.”

Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.

However, the fact that no Response has been filed does not mean that the Complaint must automatically succeed. (See for example, Sermo, Inc. v. CatalystMD, WIPO Case No. D2008-0647, where the panel noted that “… [e]ven though the Respondent defaulted, it is still Complainant’s burden to prove that Respondent lacks rights or a legitimate interest in the disputed domain name ….” In the same way, a default by the respondent does not relieve a complainant of the burden of proving each of the matters set out in paragraphs 4(a)(i) and (iii) of the Policy.)

B. Identical or Confusingly Similar

The Center’s document, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) provides at paragraph 1.2:

“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP 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. 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. While each case must be judged on its own merits, circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name ….

However: Some panels have additionally required that, for a domain name to be regarded as confusingly similar to the complainant’s trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the Complainant and/or its goods and services. Such panels would typically assess this risk having regard to such factors as the overall impression created by the domain name, the distinguishing value (if any) of any terms, letters or numbers in the domain name additional to the relied-upon mark, and whether an Internet user unfamiliar with any meaning of the disputed domain name seeking the complainant’s goods or services on the worldwide web would necessarily comprehend such distinguishing value viz-a-viz the relevant mark. …

The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion … under subsequent UDRP elements (i.e. rights or legitimate interests and bad faith).”

In this case, the Panel considers that the application of paragraph 4(a)(i) of the Policy raises the following three questions :

(i) Where a complainant’s trademark consists of a stylized version of a common English word, is that mark necessarily to be regarded as “recognizable as such” (i.e., recognizable as the complainant’s mark) within a disputed domain name?

(ii) If it is, does the complainant still have to show that some Internet users are likely to believe that there exists a connection between the domain name and the complainant’s services?

(iii) If the answers to (i) and (ii) above are both “yes”, has the Complainant in this case established a likelihood that the sort of confusion referred to in (ii) above has arisen (or will arise)?

The Panel addresses those questions in turn.

(i) Should a trademark consisting of a stylized version of a common English word be regarded as “recognizable as such” within a disputed domain name?

Trademarks which contain design elements, or consist of highly stylized words, can pose real difficulties for panels dealing with the question of confusing similarity under paragraph 4(a)(i) of the Policy. Some panels have taken the view that the design, or figurative, elements of the complainant’s mark should be ignored in the comparison which is made with the disputed domain name, primarily on the basis that it will usually be the textual element of a complainant’s mark which gives the mark its distinctiveness, and that Internet users understand that non-textual elements of a mark cannot be replicated in a domain name. For examples of this approach, see Sweeps Vacuum & Repair Centre Inc v. Nett Corp., WIPO Case No. D2001-0031, Feiyue v. Ren quijian, WIPO Case No. D2010-0023, Elite Licensing Company SA v. Ruben Paterna, WIPO Case No. D2010-0653, and Espire Infolabs Pvt. Ltd v. TW Telecom, WIPO Case No. D2010-1092.

If that approach were followed in this case, the figurative aspects of the Complainant’s WOMEN marks would be ignored, and it would not be difficult to conclude that those familiar with one or more of the Complainant’s stylized WOMEN marks would, if they turned their minds to the point, recognize that mark within the Domain Name.

Other panels have declined to make findings of confusing similarity where the complainant’s mark was a common generic word combined with a prominent device element. That view has been taken even when the disputed domain name was identical to the textual element of the complainant’s mark (for examples of this approach, see Cream Holdings Limited v. National Internet Source Inc,WIPO Case No. D2001-0964, Meat and Livestock Commission v. David Pearce, WIPO Case No. D2003-0645, and DeutschePost AG v. NJ Domains, WIPO Case No. D2006-0001). Such panels have generally considered that the mark to be compared is the whole of the mark, including both design matter and word matter, and that panels must assess the likelihood or otherwise of Internet user confusion on that basis.¹

Applying this second approach to the facts of this case, the position is perhaps more finely balanced. Nevertheless, it can probably be said that those familiar with at least Community Trademark No. 5137112 would, if they turned their minds to the point, recognize that mark within the Domain Name.

However it seems to this Panel that in cases involving trademarks consisting of extremely common generic words coupled with substantial figurative or design elements, it cannot be enough to simply ask, without more, whether the trademark is “recognizable” within the disputed domain name. Internet users will of course be aware that figurative or design elements of a mark cannot normally be replicated in a domain name, but where the distinctiveness which gives the complainant its rights in the mark is substantially derived from figurative or design elements, it would seem counter-intuitive to interpret paragraph 4(a)(i) in a way which would require panels to ignore those elements.

(ii) Does the Complainant have to show that Internet users will believe there is a connection with the Complainant’s mark?

In RuggedCom v. James Krachenfels, WIPO Case No. D2009-0130, a decision relating to the domain name <ruggedrouter.com>, the design element in the complainant’s trademark had very little prominence – it was the words “rugged router” in the mark which caught the eye. In those circumstances, the majority of the three-member panel found that confusing similarity had been established. However they did not do so on the basis of any bright line rule that design elements in a complainant’s trademark should always be disregarded in applying paragraph 4(a)(i). Rather, the majority approach was to look to what it perceived to be the purpose of the paragraph 4(a)(i) comparison, namely the setting of a standing threshold for complaints under the Policy, under which complainants were required to show that a significant number of Internet users looking for them on the Internet would be likely to arrive at the respondent’s website.

A broadly similar approach appears to have been taken by the three-member panel in Radio Italia SpA v. Mdnh Inc v. Brendhan Hight, WIPO Case No. D2010-0329, where the panel said that it had “no doubt that persons familiar with the Complainant’s trademarks would naturally associate the disputed domain name with the Complainant”.

In Apple Inc. v. Fred Bergstrom, LottaCarlsson, Georges Chaloux and Marina Bianchi, WIPO Case No. D2011-1388, the panel referred to the two competing views which UDRP panels have expressed on the question of what is required to prove confusing similarity under paragraph 4(a)(i) of the Policy. Under the first view (“View 1”), “confusingly similar” means that the disputed domain name, by reason of its similarity with the complainant’s trademark, is likely to lead to a substantial (not insignificant) level of confusion among Internet users. See Asda Group Limited v. Paul Kilgour, WIPO Case No. D2002-0857 for an example of the application of View 1. Broadly, this is the view espoused by panels who have followed the approach set out in paragraph 1.2 of the WIPO Overview 2 after the word “However”.

Under the second view (“View 2”), the panel need not be concerned with the level of Internet user confusion. On this approach, it will be sufficient for a finding of confusing similarity if the complainant’s trademark has been incorporated in its entirety in the disputed domain name. The addition of other terms in the domain name, even derogatory ones, will not affect a finding that the domain name is identical or confusingly similar to the complainant’s trademark. (For an example of the application of View 2, see Sermo Inc v. CatalystMd LLC, supra.)

In Apple Inc., the panel noted that “the heart of the divide” in panel views lay with the View 1 understanding that the purpose of the Policy paragraph 4(a)(i) test is “to determine whether or not Internet user confusion is likely”. The panel in Apple Inc. took the view that some meaning has to be given to the word “confusingly” in paragraph 4(a)(i) of the Policy, and that any approach to interpretation which does not call for an enquiry as to the existence or otherwise of some element of Internet user confusion, cannot give full effect to the wording of the paragraph. The panel concluded that, while each case should be judged on its own merits, View 1 was the natural approach; the likelihood (or otherwise) of confusion should be assessed on the basis of a subjective test which looks at the mental reaction of Internet users to the domain name.

The panel in Apple Inc. concluded its discussion of the Policy, paragraph 4(a)(i) issues by considering what kind of “confusion” is required to satisfy the paragraph 4(a)(i) test. Noting its agreement with the view expressed by the panel in Sanofi-Aventis v. Jason Trevenio, WIPO Case No. D2007-0648, the panel in Apple Inc. concluded that merely causing Internet users to wonder whether the domain name is associated with the complainant is enough; it is not necessary for a complainant to show that Internet users (or at least a not insignificant number of them) will actively believe that such an association exists.

A similar test for confusion was applied by the panel in RapidShare AG, Christian Schmid v. Helena Clouse, WIPO Case No. D2010-1086 – a “sense of bewilderment or failing to distinguish between things … a state of wondering whether there is an association, rather than erroneously believing that there is one.”

The Panel finds the analysis in the Apple Inc. case persuasive. Some effect has to be given to the word “confusingly” in paragraph 4(a)(i) of the Policy, and it is difficult to see how that can be done without considering the (subjective) reactions of Internet users to the domain name. On reflection, the Panel is also persuaded that if a substantial number of Internet users is merely “caused to wonder” if there exists some association between mark and domain name, that should be sufficient to satisfy the “confusingly similar” test. Paragraph 4(a)(i) is generally accepted as setting a low “standing” threshold, and asking whether a significant number of Internet users would be likely to arrive at the respondent’s website (the test adopted in ruggedrouter) does, on reflection, set the bar too high. In summary then, the question for the Panel is whether or not a substantial (i.e. not insignificant) number of Internet users is likely to be confused by the similarity between trademark and domain name, in the sense of being “caused to wonder” whether the domain name is associated with the complainant’s trademark in some way.

(iii) Has the Complainant established that sort of confusion in this case?

While the issue is not free from difficulty, the Panel considers that the Complainant has failed to meet the standard articulated in the Apple Inc. case, even allowing for the relatively undemanding “standing” threshold established by paragraph 4(a)(i) of the Policy. There must be hundreds of domain names which contain the word “women”, and the vast majority of Internet users will expect such domain names to resolve to websites concerned (in one way or another) with the ordinary generic meaning of that word. The ubiquity of the word is such that even those familiar with the Complainant and its stylized WOMEN marks would have no particular reason to wonder if the Domain Name might be associated with the Complainant.

The addition of the “-asia” term in the Domain Name does not help the Complainant. The natural meaning conveyed by the Domain Name, is “the address of a website which will probably be concerned either with Asian women, or with women in Asia”. The Complainant submits that Internet users would consider the Domain Name to be connected with the Complainant’s activities in China and/or Japan, but there is no evidence that the Complainant operates any Asian regional office, and no other basis in the evidence to justify a conclusion that Internet users would think that the Complainant, with its offices in New York, Milan, and Paris, might have chosen a website address containing the word “Asia”.

On the evidence which has been produced, the Panel is not satisfied that any similarity between the Complainant’s WOMEN figurative marks and the Domain Name is such as to create confusion (of the “caused to wonder” kind) among a not insignificant number of Internet users.

For similar reasons, the Panel does not regard the Domain Name as confusingly similar to either of the marks WOMEN MANAGEMENT or WOMEN DIRECT. The word “women” in the Domain Name is likely to be read as purely generic, and whatever might be the impressions conveyed by these two marks, they will likely be different from “Asian women”, or “Women in Asia”, which are the essential concepts conveyed by the Domain Name.

The Complainant having failed to make out its case under paragraph 4(a)(i) of the Policy, the Complaint will be denied.

C. Rights or Legitimate Interests

Having regard to the views to which the Panel has come on the “identical or confusingly similar” issue, and on the bad faith issue discussed below, it is unnecessary for the Panel to make any findings under this heading.

D. Registered and Used in Bad Faith

Given the Panel’s findings in Section 6B of this decision, it may not be strictly necessary to make any findings under this heading. However the Policy, paragraph 4(a)(i) issue was no means easy – on the Panel’s interpretation of paragraph 4(a)(i), the required comparison is ultimately a matter of impression, and the Panel acknowledges that another panel might have come to a different result. In those circumstances, the Panel considers it appropriate to record its view that the Complaint also fails to satisfy the “bad faith” requirements of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

In this case, there does not appear to have been any attempt by the Respondent to sell the Domain Name to the Complainant at a profit, or to monetize the Domain Name in any way (e.g. by way of sponsored links to third party websites, from which the Respondent would derive pay-per-click revenue). There is no allegation that the Respondent has engaged in any relevant pattern of conduct which might be caught by paragraph 4(b)(ii) of the Policy, and nothing to suggest that the Respondent is a competitor of the Complainant and that paragraph 4(b)(iii) of the Policy might apply.

And in the absence of clear evidence of a deliberate “targeting” of the Complainant’s mark by the Respondent, there is insufficient evidence for the Panel to safely conclude that the Domain Name was registered in a bad faith attempt to create confusion with the Complainant’s WOMEN marks. The Meta Description and the Meta Keywords for the Domain Name shown on the DomainTools website suggest that the Respondent’s website was intended to be an adult website, offering singles meeting, sex toys, sex chat, and so on, and the pictures on the Respondent’s website are predominantly pictures of young women. One can readily understand why a company based in Bangkok might legitimately choose <women-asia.com> as the domain name for such a website.

Selecting a domain name because it is descriptive or suggestive of the services to be provided through a website at that domain name, is not normally regarded as bad faith conduct under the Policy. That is not to say that a complainant with a substantially descriptive or generic expression as its trademark can never succeed in a complaint under the Policy: the critical matter in such a case is whether the respondent selected the Domain Name because of its attractiveness as an ordinary descriptive expression, or whether the choice was motivated by a bad faith desire to profit from the complainant’s goodwill in its trademark (e.g. by attempting to sell the domain name to the complainant at a profit, or by earning pay-per-click advertising revenue through a website at the domain name).²

The majority of UDRP panels, including this Panel, have taken the view that the Policy requires that the Complainant establish bad faith by the Respondent in the registration of the domain name, as well as in its subsequent use (see, for example, Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, Camon SpA v. Intelli-Pet LLC, WIPO Case No. D2009-1716, BioClin BV v. MG USA,WIPO Case No. D2010-0046, and the decision of the majority in A Nattermann & Cie. GmbH and Sanofi-Aventis v. Watson Pharmaceuticals Inc., WIPO Case No. D2010-0800).

In this case, the Complainant has not provided any evidence of how the Domain Name was used in June 2009 when it was first registered, and the broad descriptive nature of the Domain Name, and its apparent suitability for a website of the kind described in the Meta Description and Meta Keywords, make it entirely possible that the Domain Name was registered without any thought of the Complainant at all (or at least without any intention to target the Complainant’s goodwill in its WOMEN figurative marks).

The Panel is not saying that there are no doubts at all about the Respondent’s bona fides - the Respondent has failed to establish a fully functioning website at the Domain Name in the four years since the Domain Name was registered, and of course it has failed to file a Response in this proceeding. But at the end of the day the burden of proof is on the Complainant, and the Panel believes there is not enough in the evidence produced for it to infer that the 2009 registration of the Domain Name was made in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Warwick Smith
Sole Panelist
Date: September 9, 2013

¹ The Deutsche Post case provides a good illustration of this approach. The disputed domain name was <post.com>, and the complaint was based on a design mark consisting of the word “Post” alongside a prominent yellow and black horn device. The panel noted that the word “Post” was purely generic, and that the trademark was dominated by the prominent illustration of the horn. In addressing the “confusingly similar” question, the panel applied an “overall impression of a reasonable bystander” test, and concluded that the disputed domain name did no more than evoke the common, generic word “post”. A reasonable bystander would not be confused into thinking that the domain name was really referring to a coloured logo of a horn with the word “post” added to it.

² See for example Landmark Group v. DigiMedia.com LP, NAF Claim No. 285459 (holding that a respondent would have a legitimate interest in the disputed domain names if “the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”). To similar effect, see Mobile Communication Service Inc. v. Web Reg RN, WIPO Case No. D2005-1304, mVisible Technologies, Inc. v. Navigation Catalyst Systems Inc., WIPO Case No. D2007-1141 and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.