CONFUSING SIMILARITY WITH COMPLAINANT'S RIGHTS
Since the domain name and the Complainant’s trademarks are not identical, the key element investigated and considered by the Panel is whether the disputed domain name consisting of to a certain level generic term “RUE DU COMMERCE” accompanied by a suffix “RD” is confusingly similar to the Complainant’s trademarks “RUE DU COMMERCE” or “RUE DU COMMERCE.COM”.
Having in mind the complexity of this issue, the Panel below reveals in detail its considerations and findings:
(i) Existing Case Law
In decisions by various panels constituted under the UDRP process to resolve domain name disputes, there has been discussion of what constitutes confusion for the purposes of paragraph 4(a)(i) where registered trademarks and domain names already in use had been joined together with generic prefixes or suffixes to form a new domain name (sometimes referred to as a derivative).
Although the panel is well aware that the principle of stare decisis does not apply in these proceedings and that it is not bound by decisions reached by earlier panels, it is of the opinion that a review of some the cases provides some support for the conclusions of this decision.
(i) (a) Prefix or Suffix Case Law
There are a number of other decisions within the UDRP process which have addressed the issue of whether a domain name, which comprises the Complainant’s mark together with a prefix or suffix, gives rise to confusing similarity.
The decisions fall mainly into two categories: 1) addition of a geographical suffix to a well-known domain name (see, for example, Wal-Mart Stores, Inc. v Walmarket Canada, WIPO D2000-0150; Wal-Mart Stores, Inc. v Walsucks and Walmarket Puerto Rico, WIPO D2000-0477; AltaVista Company v S.M.A. Inc., WIPO D2000-0927), or 2) addition of “sucks” to a similarly well known name (see, for example, Dixons Group Plc v Purge I.T. and Purge I.T. Ltd., WIPO D2000-0584; Cabela’s Inc. v Cupcake Patrol, NAF FA0006000095080; Wal-Mart Stores, Inc. v Walsucks and Walmarket Puerto Rico, WIPO D2000-0477).
The Complainant has typically prevailed in both types of categories.
Decisions in the former category have been disposed of generally on the clearly correct basis that the addition of a place name is not likely to alter the underlying mark (Wal-Mart Stores, Inc v Walsucks and Walmarket Puerto Rico, WIPO D2000-0477) and not likely to change the fact that consumers will be confused.
Decisions in the second category have been decided for on the basis of similar reasoning, though this seems more open to dispute. There are a number of other decisions where there is neither a geographical, nor derogatory addition (see, for example, Yahoo!, Inc. and Geocities v Cupcakes et al., WIPO D2000-0777; Yahoo!, Inc. v Cupcake Patrol et al., WIPO D2000-0928). These too have followed similar reasoning, though the finding of confusing similarity is largely based in these cases on evidence of demonstrated confusion amongst consumers.
The disputed domain name which is the subject of this administrative decision does not fall into either the geographical or "sucks" category, but at first blush the same principle would appear to apply: the addition of a suffix does not alter the underlying mark and confusion will inevitably result.
It is here that the Complainant’s idea of ‘genericness’ comes into play. The other decisions dealt with either extremely well known marks, which had a high degree of inherent or acquired distinctiveness: for example, Walmart, Standard Chartered, Dixons, Altavista and Yahoo, or at least concerned trademarks which have no meaning in common language (i.e. they are fantasy or imaginary trademarks “invented” by their holders).
They did not deal, as here, with marks which are the concatenation of two words that are (in French language) to certain degree generic (the term “rue du commerce” can be approximately translated into English as a shopping street, shopping avenue, shopping mall or alike). This has been dealt in other case law.
(i) (b) Generic mark and generic word case law
On the other hand, decisions dealing with an issue of descriptiveness of the trademark or a trademark and a generic word, showing more mixed decisions, often resulted in rejection of a complaint (see, for example, Hotels unis de France vs. Christopher Dent / Exclusivehotel.com, WIPO D2005-1194, Pinnacle Intellectual Property vs. World Wide Exports. WIPO D2005-1211, City Utilities of Springfield vs. Ed Davidson, WIPO D2000-0407 and similar).
(ii) Legal Analysis
The effect of strictly and automatically adopting the principle from the prefix or suffix cases would be to stop any other registrations of domain names which add either a prefix or suffix to registered trademarks, even though such trademarks are quite generic.
The Panel declines, therefore, to adopt the broadest interpretation of the principle from the suffix or prefix cases, and instead believes that it is necessary to apply a more case specific approach as established by “mark with generic word” and “generic / distinctive” case law.
As a result, the following test should be followed:
A domain name comprising from a trademark and a suffix (or prefix) should not be held confusingly similar to such trademark:
(1) Where that trademark is essentially generic within the online world and has not acquired such distinctiveness as to merit broader protection (i.e. in particular, where such originally generic trademark has not yet - through its use, advertising good name, etc. - acquired such distinctiveness that it is exclusively attributable to its trademark holder – Complainant); and
(2) Where the suffix or prefix (or the domain name as a whole) does not relate specifically and exclusively to the business of the Complainant.
In the Panel’s view, the Complainant’s trademarks consisting of the “RUE DU COMMERCE” denomination are prima facie rather non-distinctive. However, the Complainant has shown that through extended use, promotion and advertising spent by the Complainant, its trademarks have become so well known as to acquire the requisite degree of distinctiveness taking them out of their original generic nature. Addition of non-distinctive element - suffix “RD” - to the “RUE DU COMMERCE” denomination cannot prevent the association in the eyes of internet consumers between the disputed domain name and the Complainant’s trademarks and thus the likelihood of confusion still exists.
Therefore, the Panel has decided that there is confusing similarity in this case, it also concludes that the Complainant has satisfied paragraph 4(a)(i) of the UDRP.
BAD FAITH
Since there is only a remote chance that the Respondent has registered such complex domain name just by a chance and without having a knowledge about the existence of the Complainant’s rights and business, the Panel contends, on the balance of probabilities, that the above discussed similarity has been established by the Respondent on purpose and in a bad faith. Thus, the Panel has taken a view that the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).
NO RIGHTS OR LEGITIMATE INTEREST
The Complainant’s assertions that the Respondent is not commonly known by the disputed domain name and is not affiliated with nor authorised by the Complainant are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. The Respondent failed to provide any information and evidence that it has relevant rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii)of the Policy).
For the reasons as set out above, the Complaint is Accepted.
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