Important Distinction Made by UDRP Panel on Trademark Confusion

In the National Arbitration Forum case of The PNC Financial Services Group, Inc. v. James Anderson / PTCBank.net, the panel makes an important distinction when it comes to trademark confusion.  Even though there is a one letter “misspelling” of the trademark (PTCBank as opposed to PNCBank), the panel finds that this is NOT typosquatting.

Each of the disputed domain names is identical to Complainant’s PNCBANK mark, but for the substitution of a single character (T for N) and the addition of a top-level domain suffix.  Complainant alleges that the domain names are confusingly similar to Complainant’s PNC and PNCBANK marks.

 

A domain name that contains a misspelled version of a trademark—a practice commonly referred to as “typosquatting”—is normally deemed to be confusingly similar to the mark for purposes of the Policy.  See, e.g., Nasdaq Stock Market, Inc. v NSDAQ.COM, NASDQ.COM and NASAQ.COM, D2001-1492 (WIPO Feb. 27, 2002).  Nonetheless, the trademark must be easily recognizable within the domain name to support such a finding.  See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 1.2 (2d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview/.

 

When a mark exists within a crowded field, a higher degree of similarity may be required for a domain name to be deemed confusingly similar to the mark.  See, e.g.Mastercard Int’l Inc. v. Education, Ersin Namli, D2011-2312 (WIPO Mar. 8, 2012) (declining to decide whether <pricelessistanbul.com> is confusingly similar to PRICELESS); Google Inc. v. Texas International Property Associates, FA 1212995 (Nat. Arb. Forum Aug. 25, 2008) (holding that <youtubes.com> is confusingly similar to YOUTUBE, even under a heightened standard); Pinnacle Intellectual Property v. World Wide Exports, D2005-1211 (WIPO Feb. 17, 2006) (holding that <canadamedicineshop.com> is not confusingly similar to THE MEDICINE SHOPPE).

 

In assessing whether the mark is easily recognizable within the domain name, the Panel may consider not only the existence of similar marks (i.e., whether the mark exists within a crowded field) but also whether the domain name has a meaning that is independent of and distinct from the trademark.  Thus, for example, the domain name <theatre.com> would not be deemed confusingly similar to the trademark HEAT, even though the mark appears verbatim within the domain name.  See WIPO Overviewsupra, at § 1.2.  The existence of an independent meaning for the domain name does not preclude a finding of confusing similarity, but it does warrant application of a heightened standard of similarity.

 

Only the trademark and the domain name itself are to be considered in the assessment of confusing similarity.  The manner in which the domain name has been used—including the content of the corresponding website—is not relevant to this question.  See, e.g., Air Products and Chemicals, Inc. v. Chongqing Acme Tech. Corp., Ltd., D2011-0842 (WIPO Aug. 2, 2011).

 

The Panel is extremely reluctant to find confusing similarity between a trademark consisting of a three-letter acronym and a domain name that has only two of those letters in common with the mark, especially where the domain name is not simply an obvious misspelling of the trademark.  The letters PTC in the disputed domain names here presumably refer to Respondent’s “paid-to-click” business model, but could also refer to any number of other terms or entities.  Wikipedia contains a description of the “paid-to-click” business model on a page that apparently dates back to 2007, long before Respondent’s registration of the disputed domain names.  See Paid to Click, Wikipedia, http://en.wikipedia.org/wiki/Paid_To_Click.  Presumably there are many other things that PTC may refer to.  In addition, Complainant’s mark and the PTC variation exist within an extremely crowded trademark field:  there are numerous U.S. trademark registrations for PTC, as well as for PAC, PBC, PCC, PDC, PEF, and for nearly every other three-letter combination beginning with P and concluding with C.  The Panel therefore considers it unlikely that the disputed domain names would be confused with Complainant’s PNC mark.

 

Complainant has a stronger case for confusing similarity between the disputed domain names and its PNCBANK mark.  Nonetheless, PNC is the dominant component of that mark, while PTC is the dominant component of the disputed domain names, and the Panel does not consider them to be sufficiently similar.  Respondent’s use of Complainant’s logo on his website does not alter this conclusion, as the content of the website has no bearing on whether the domain names are confusingly similar to Complainant’s marks.

 

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