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When Two Trademarks Aren't Confusingly Similar to One Trademark

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Doug Isenberg

As I've written before, domain name disputes involving multiple trademarks sometimes raise interesting issues, including whether a panel can order a domain name transferred to one entity without consent of the other. While panels typically have found ways to resolve this issue, one particularly troubling fact pattern arises when a panel denies a complaint simply because a disputed domain name contains trademarks owned by two different entities.

The situation presents itself when a panel considers whether a domain name containing two trademarks is "identical or confusingly similar" to a single trademark — that is, the trademark owned by the complainant — as required by the first factor of the Uniform Domain Name Dispute Resolution Policy (UDRP).

In one odd case, a UDRP panel confronted the issue when a complaint was filed by the owner of the trademark NSK, but the disputed domain name also contained the trademark SKF — "which is a third-party brand of bearing products which competes with Complainant." Therefore, the panel was faced with the question of whether the domain name <skfnsk.com> was confusingly similar to the complainant's SKF trademark.

Many UDRP panels apply this first UDRP factor liberally. Indeed, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, says, "The first element of the UDRP serves essentially as a standing requirement."

And, many UDRP panels have adopted the position that "the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy."

Still, the panel in the <skfnsk.com> case saw things differently, writing:

The Panel finds that Complainant has not met its burden regarding confusing similarity. Complainant has adequately alleged its interests in and to the NSK mark; however, Complainant has no rights or interests in the SKF mark. Complainant alleges no nexus between it and the owner of the SKF mark. As such, Complainant essentially has standing to bring this claim regarding the NSK mark but not the SKF mark.

As a result, the panel denied the complaint, allowing the respondent to retain registration of the disputed domain name even though it contained the complainant's trademark.

Amazingly, two days after the decision in the <skfnsk.com> case had been published, the Forum published another UDRP decision in a similar case also filed by the owner of the trademark NSK and also containing the SKF trademark. And the panel in that case reached a different conclusion! In that case, the panel found <nsk-fag-skf-ntn.com> confusingly similar to the NSK trademark, writing that "the Panel agrees that the additions Respondent has made to the NSK mark are insufficient to overcome Policy ¶ 4(a)(i)."

The panel's denial in the <skfnsk.com> case also contradicts an earlier decision with similar facts, involving the domain name <skf-nsk-bearings.com>. There, the panel simply wrote: "Complainant argues that the <skf-nsk-bearings.com> domain name is confusingly similar to the NSK mark for the following reasons: 'skf' refers to a third-party brand of bearing products which competes with Complainant, and 'bearings' is a term descriptive of Complainant's business. The Panel agrees."

The panel's denial in the <skfnsk.com> case is difficult to reconcile with the other decisions, and it seems to be quite unusual. Still, it is not the only time a panel has taken this perspective. In a case involving the domain name <nikegoogle.com>, a panel denied the complaint because it was filed only by Nike, not by Google, and "Complainant has failed to establish rights in or to the GOOGLE mark per" the first requirement of the UDRP.

Interestingly, the <nikegoogle.com> case was refiled soon after the denial, with both Nike and Google as complainants. The second panel ordered the domain name transferred — to Nike, as the parties requested. (Oddly, the second decision does not address the first decision, which raises the interesting question of whether the second complaint was a proper case for refiling, which UDRP service providers and panels typically accept only in limited circumstances.)

While the <skfnsk.com> and (first) <nikegoogle.com> cases are outliers, the decisions reinforce the importance of joining all relevant trademark owners in a UDRP complaint, or at least ensuring that the record demonstrates their relationship and consent. As in all domain name disputes, nothing should be taken for granted.

By Doug Isenberg, Attorney & Founder of The GigaLaw Firm. Learn more by visiting The GigaLaw Firm website. Doug Isenberg also maintains a blog here.

Related topics: Domain Names, Intellectual Property, Law



Interesting scenario Thomas Barrett  –  Feb 26, 2017 1:57 PM PDT


Thanks for the interesting use case.

What about the use where there are multiple trademark owners for the same string?

say "delta" or "united".  And for the sake of argument, let's say there are no factors associating the current use for any specific goods and services.

Are there any panels that have addressed who the rightful owner should be for this case?


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