Decision shows that first limb of UDRP is not always mere threshold test
Cinemark USA Inc, a US motion picture exhibitor company, has lost a case (Case D2011-2045, February 1 2012) filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) in relation to the domain name ‘cinemaki.com’. The domain name was registered on March 31 2008 and was being used to point to a cinema website presenting film titles, content and session times across Latin America. A single-member panel ruled that Perbany SA, a Uruguayan-based company owning a range of movie-related websites, was allowed to retain ownership of the domain name.
To be successful in a complaint under the UDRP, a complainant must evidence that:
- the domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
The panel was not satisfied that the complainant had established the first requirement. The complainant argued that it was the owner of CINEMARK marks in at least 20 countries, and the registrant of several domain names all including the term ‘Cinemark’. The complainant argued that the domain name ‘cinemaki.com’ was confusingly similar to its mark on several grounds. First, the initial part of the domain name was identical to its mark. Second, both the domain name and the mark had the same number of letters. Third, the only difference between the term ‘Cinemark’ and the domain name was the ending (‘ki’ and ‘rk’). Moreover, both included the same distinctive letter ‘K’ and differed by only one letter (‘i’ and ‘r’). The complainant argued that this was not sufficient to grant the respondent rights over the domain name and certainly not sufficient to avoid confusion by consumers.
The complainant further argued that the panel had to consider the confusion resulting from the internet user's impression at first sight. This should be assumed from the point of view of the consumer and relate to the nature of the products and services involved, in this case the movie industry. Finally, the complainant asserted that:
- the domain name was visually and phonetically similar to its mark; and
- the respondent was thus aiming to confuse consumers to attract them to its own website and take advantage of the complainant's goodwill and reputation.
The respondent did not reply to the complaint.
To determine confusing similarity, the panel considered the WIPO Overview Panel Views on Selected UDRP Questions, Second Edition, Section 1.2, which states as follows:
"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 recognisable 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 straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name."
Considering the complainant's arguments and the lack of response by the respondent, the panel concluded that the domain name was not confusingly similar to CINEMARK. Although there was no question that the complainant had trademarks in the term ‘Cinemark’, it did not sufficiently prove that the domain name and the registered trademarks were identical or confusingly similar.
Examining all the contentions of the complainant in turn, the panel adopted the following reasoning. First, the relevant trademark CINEMARK was not recognisable when viewing or listening to the domain name. This is because a trademark is generally not recognisable as such within a domain name when letters in the domain name have to be deleted, added or rearranged in order to make the trademark identifiable. Here, contrary to what the complainant had argued, there was no distinctive letter ‘K’, either in the trademark or in the domain name. In fact, the distinctive letter in the trademarked name was the letter ‘M’ in the complainant's design mark, which extended horizontally forwardly and rearward under ‘cine’ and ‘ark’.
Most importantly, the panel took into consideration the case referred to by the complainant, Reuters Limited v Global Net 2000 Inc (Case D2000-0441). The panel held that, in Reuters, the facts were obviously different from the present case and, in any case, "previous cases are not of much assistance when a test of visual or aural comparison is applied in a subsequent case". In Reuters, the disputed domain names differed from the registered trademark by one letter, whereas in this case, in order for the term ‘Cinemark’ to be confusingly similar to the domain name, it would be necessary to rearrange, delete or add letters, which would not be consistent with the threshold test for confusing similarity.
Regarding the second and third prongs of the UDRP, the panel pointed out that, since the domain name was not identical, or confusingly similar, to the complainant's marks, there was no reason to examine the possibility of lack of rights or legitimate interests in the domain name, or of registration and use in bad faith. This was despite the fact that the complainant gave full evidence of both in its complaint.
The panel thus denied the complaint.
Although the first requirement of the UDRP is usually the easiest condition to prove, panels do not systematically find that, just because the complainant has trademark or service mark rights in a term, every domain name resembling that term is identical, or confusingly similar, to the relevant trademark or service mark. The complainant must actually prove this point. Therefore, the first limb of the UDRP is not always just a mere threshold test to guarantee that the complainant has the relevant rights to bring a UDRP complaint. The panel will thoroughly examine the first limb of the UDRP when necessary. Here, this led to a rather unfortunate outcome for the complainant.
David Taylor and Jane Seager, Hogan Lovells LLP, Paris
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