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Domain Name Containing Trademark Translation is Determined Confusingly Similar

Cedric Manara

Interesting WIPO case (D2005-1085): Complainant (Saint-Exupery estate) owns "Le Petit Prince” in EU, US, and other countries. The translation of "Le Petit Prince" is "The little prince". Respondent registered 'thelittleprince.com'. Is such a domain name confusingly similar to the trademark? Yes said the panel:

"The disputed domain names [sic] do not incorporate Complainant's mark "Le Petit Prince" but the English translation of Complainant's trademark "The Little Prince". The Panel thus finds that there is no phonetic similarity between the disputed domain name and Complainant's trademark.

However a semantic similarity between a trademark and a domain name can also exist if the trademark and the domain name contain word elements of different languages if a considerable part of the public understands the meaning of the translation. See e.g. Compagnie Generale Des Etablissements Michelin - Michelin & Cie. v. Graeme Foster, WIPO Case No. D2004-0279. The Panel observes that Complainant's registered trademark is identical with the English translation of Complainant's trademark and title "Le Petit Prince" and that the English title "The Little Prince" of Saint Exupéry's novel is well known in the English speaking world."

By Cedric Manara, Law Professor. More blog posts from Cedric Manara can also be read here.

Related topics: DNS, Domain Names

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Comments

Re: Domain Name Containing Trademark Translation is Determined Confusingly Similar Jothan Frakes  –  Jan 18, 2006 3:44 PM PST

Does this set precedence for more loose interpretation of 'confusingly similar'? 

This seems noteworthy in that it could have bearing on IDN or other typographical variant registrations that seem quite common.

Re: Domain Name Containing Trademark Translation is Determined Confusingly Similar Robert Lee Claypool  –  Jan 19, 2006 6:35 PM PST

But aren't trademarks goods and services dependent.
http://www.uspto.gov/web...

Such that as long as the website isn't promoting the good that the trademark covers, it should be alright?

Re: Domain Name Containing Trademark Translation is Determined Confusingly Similar shenyang  –  Jan 24, 2006 6:53 AM PST

Dear Vint Cerf,may you tell us what time can use IDN with gTLD?
as in P.R.China users must buy between ccTLD(e.g,www.Chiinese.cn IDN) & gTLD(e.g www.Chinese.com IDN), but a few can use with our computer's IE.

Re: Domain Name Containing Trademark Translation is Determined Confusingly Similar JFC Morfin  –  Feb 01, 2006 12:45 PM PST

Dear Shenyang,
may be will you want to use Chinese names; using Chinese TLD? You can find them as well as Chinese keyword on the CNNIC site. You will note that you can use Chinese private aliases off the shelf in using Firefox.

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