The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).
The Complainant has identified a number of relevant marks (see for instance Community Trade Mark 008499782, currently active and in force since 2010, in a number of classes, such as class 25 'clothing, footwear, headgear; sportswear apparel and casual clothing [...]'). These marks relate to the string O'NEILL. This is not identical to the disputed domain name <ONEILLBOARDSHORTS.COM>. Nonetheless, is it confusingly similar?
The first question relates to the difference between ONEILL and O'NEILL - that is, the apostrophe. The Complainant's submission is silent on this question. The apostrophe is a significant feature of English grammar, and cannot be completely ignored. However, the Panel is aware that the domain name system as initially designed envisages a narrow range of permissible characters, essentially confined to the letters and numbers typically used in English along with a small number of punctuation marks. In many respects, this is narrower than the international trademark system. Although the introduction of internationalised domain names in respect of some TLDs has addressed this historic oversight in a number of areas, the Panel can take note of how cases in which similarity turns on the handling of the apostrophe have been determined. (Interestingly, it seems that this specific question has not yet been the subject of a Panel decision within the CAC in respect of the UDRP, although there have been a number of cases concerning somewhat related issues such as the replacement of a space with a hyphen). Looking more broadly, however, the Panel can observe that the presence or absence of an apostrophe, while potentially of grammatical or linguistic significance, can still mean that visual similarity is established (see WIPO D2017-0726 <LOWWS.COM>; D2016-1221 <BILLYBOBS.COM>) and that such similarity is confusing (see for instance NAF 203944 <KIELS.COM>).
A second question relates to the difference between ONEILL and ONEILLBOARDSHORTS. In terms of similarity, it is well established that the addition of a generic or descriptive term to that term in which a Complainant has rights is often no barrier to a finding of confusing similarity. The Complainant submits that, in this case, the descriptive term ('board shorts') increases the prospect of confusing similarity, because it is one of the products commonly sold under the name O'Neill. A helpful set of examples of this phenomenon is set out in a decision of a CAC Panel in respect of .eu (interpreting in this context a comparable requirement as under the UDRP): Case 06295 <BENEFITCOSMETICS.EU> and well summarised in CAC 101296 <MAERSK-CARGO.COM> as where a 'domain name consists of the Complainant's well-known mark together with a word descriptive of its primary service and the generic top level domain suffix'.
|