Award winning website owner wins again
In Residential Equity LLC v Personal, Coldwell Banker, represented by its parent company Residential Equity LLC, has obtained an order from a National Arbitration Forum panel for the transfer of the domain name 'coldwellbankers.com', which was being used by a Russian entity identified only as 'Personal'.
Since its launch in the late 1990s, international real estate company Coldwell Banker has won much acclaim for its highly rated 'coldwellbanker.com' website. Personal allegedly used the 'coldwellbankers.com' domain name for 17 months after registration to divert Coldwell customers to a host of corporate internet sites directly in competition with Coldwell.
Panellist Charles K McCotter Jr recognized previous Uniform Domain Name Dispute Resolution Policy decisions stating that the addition or deletion of an 's' from an existing domain name does not change the overall impression of the mark, and in fact, may serve to make the domain name confusingly similar instead of distinctive.
McCotter inferred that because of the longstanding and well-known nature of Coldwell's mark, Personal registered the disputed domain name with knowledge of Coldwell's existing rights in 'coldwellbanker.com'. This inference of imputed knowledge was sufficient for McCotter to conclude that Personal knowingly infringed Coldwell's domain name and thus, ordered the transfer of the disputed domain name.
This decision reaffirms the principle that in trademark law the simple addition of an 's' to the end of a word does not normally avoid confusion or create proprietary rights. On the other hand, if the underlying mark had been less distinctive, there might have been no finding of confusion.
Gordon J Zimmerman, Borden Ladner Gervais LLP, Toronto
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