John Berryhill Wins Forces.com UDRP
I don’t have any legal expertise, so I generally stick to writing about UDRP filings that appear be fairly obvious. When Salesforce filed a UDRP for Forces.com, it bothered me quite a bit because of the descriptive nature of the domain name. It was also the first UDRP filed against the domain owner, and it didn’t seem right to me.
I just read the NAF UDRP decision, and the complaint was correctly denied by the three panelists (Honorable Neil Anthony Brown QC, Honorable James A. Carmody (Ret.), and the Honorable Bruce E. Meyerson (Ret.)). Skilled domain attorney John Berryhill successfully defended the domain owner’s right to this descriptive domain name, although a reverse hijacking finding was not sought by the respondent.
Unfortunately for the domain owner, his company now has a UDRP filing on its records, despite it being a victory in his company’s favor. In addition, UDRP defenses aren’t inexpensive, so the sunk legal costs just added to the cost of owning this domain name. It doesn’t seem very fair to me.
Here are some excerpts from the UDRP decision that I found most interesting, although you should read through the decision in its entirety, just so you can see how a panel decides a case like this:
The Panel finds it unnecessary to determine whether Complainant has rights in any of the claimed marks—SFORCE, FORCE.COM or FORCE—because the Panel finds that the domain name is neither identical nor confusingly similar to any of the marks. The word “forces” is not identical to any of the marks. The only real issue before the Panel is whether the word “forces” is confusingly similar to one or more of the marks.
In considering whether a domain name is confusingly similar to a mark in which a complainant has rights, the question becomes whether the “alphanumeric string comprising the challenged domain name is identical to Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the domain name is ‘confusingly similar’ to the mark.”
Complainant is correct that in some cases the mere addition of a letter, or the creation of similar word, can create a domain name that is confusingly similar to a mark. An example of this is found in Ecolab USA Inc. v. Tomasz Kluz / Ekolab s.c. Tomasz I Aleksandra Kluz, FA 1386906 (June 3, 2011). In that case, the respondent substituted a “k” for the letter “c” in the mark thus changing “ECOLAB” to “Ekolab.” The panel in Ecolab USA Inc. observed that the domain name was confusingly similar to the complainant’s mark because it was phonetically similar.
In Spark Networks USA, LLC the respondent added the letter “r” to the complainant’s mark, CHRISTIANMINGLE, creating the domain name, . The Panel correctly found the domain name to be confusingly similar to the mark, holding that the “two words are, therefore, almost phonetically similar, as well as being visually similar, and they are especially similar conceptually.”
These cases are in contrast to the present case. First, the word “forces” has an apparent relationship to the military, thus having no evident connection to any business activity of the Complainant. Second, as to SFORCE and FORCE.COM there is no phonetic or visual similarity between the domain name and Complainant’s marks. Although the word “forces” is arguably visually similar to Complainant’s FORCE mark, the lack of distinctiveness to the mark, and the demonstrably different meaning of the words, results in a lack of any confusing similarity between the two.
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