No confusing similarity between domain name and Complainant’s combination device and word mark

The recent UDRP decision over the domain name <> provides guidance on whether and to what extent a Complainant’s combination device and word mark can support a finding in Complainant’s favor under the first UDRP element. The Panel in this case found there was no confusing similarity between such a mark and the disputed domain name.

Complainant’s registered French trademark featured a “very prominent parcel design in red” and also contained, in “comparatively small font,” the slogan “your delivery experts”. Since the asserted mark was a device + word, the Panel found that the domain name was not identical to the registered mark, and the question became whether the domain name was confusingly similar.

The Panel looked to Limited Liability Company Infomedia v. c/o Office-Mail processing center / Whois privacy services, provided by DomainProtect LLC / 1) Eurofirm Ltd. 2) Ethno Share PO, Domain Manager, WIPO Case No. D2010-1239 for guidance on analyzing the situation under this first element.

The Panel noted that when a complainant’s mark is a combination trademark featuring a prominent design with a commonly used or generic word beside it, a panel should make a literal comparison of the trademark and the relevant domain name, considering the overall impression given by the mark, taking into account as appropriate the strength of the word mark element which is being directly compared with the domain name, and considering the relevant prominence of the word mark element in the context of the overall impression given by the trademark.

In other instances, particularly where the word component of the relevant mark has not been disclaimed as such, panels have found it appropriate to disregard the device element, and limited the comparison to one between the textual component of the relevant mark and the alphanumeric string in the disputed domain name.

In this case, the Panel found Complainant’s word portion of the mark descriptive and weak. And Complainant did not provide additional evidence of use of the slogan “your delivery experts” such as might demonstrate the development of trade mark significance through use. It further observed that in cases where the word element is a common or dictionary term and not inherently distinctive, panels place the onus on the complainant to present compelling evidence of secondary meaning and distinctiveness through extensive use.

Although the threshold question of trade mark rights and confusing similarity under the first element of the Policy is generally considered by panels to be a low one, the Panel in this case found that there was simply insufficient evidence of the trademark significance of the slogan “your delivery experts” in the combined mark to meet even a basic threshold.

Geopost v. Privacy Protection Service Inc., WIPO Case No. D2015-1602

About the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at], or follow him on Twitter @internetcases