StreetPrices.com, Inc. v.
Nett Corp.
Claim Number: FA0908001280020
PARTIES
Complainant is StreetPrices.com, Inc. (“Complainant”),
represented by Mitchell Chyette, of Leland, Parachini, Steinberg,
Matzger & Melnick, LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <streetprice.com>, registered
with Moniker Online Services LLC.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelist in this proceeding.
Calvin A. Hamilton (Chair), David H. Bernstein and The Honourable Neil
Anthony Brown QC as Panelists.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 17, 2009; the National Arbitration Forum received a
hard copy of the Complaint on August 20, 2009.
On August 19, 2009, Moniker Online Services LLC confirmed by e-mail to
the National Arbitration Forum that the <streetprice.com> domain
name is registered with Moniker Online Services LLC and that the Respondent is
the current registrant of the name.
Moniker Online Services LLC has verified that Respondent is bound by the
Moniker Online Services LLC registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 1, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 21, 2009 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@streetprice.com by e-mail.
A timely Response was received and determined to be complete on October
13, 2009.
On October 21, 2009, pursuant to Respondent’s request to have the
dispute decided by a three-member Panel, the National Arbitration Forum
appointed Calvin A. Hamilton (Chair), David H. Bernstein and Neil Anthony Brown
as Panelists.
RELIEF
SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PROCEDURAL MATTERS
On November 6, 2009 Complainant applied to the Panel requesting leave to
file a supplemental brief to Respondent´s Response. It is in the discretion of
the Panel to allow or deny these types of requests. The Panel denies Complainant´s request on the
ground that it is competent to analyze the relevance of the NAF and WIPO cases
cited in Respondent´s submission. The Panel also feels that it has sufficient
factual information necessary to decide this case on the merits.
PARTIES’
CONTENTIONS
A. Complainant
1.
Streetprice.com is identical or confusingly similar to
streetprices.com.
Complainant is commercially known as <streetprices.com>
and has been using the <streetprices.com> mark
since November 1, 1997 when it launched its website <streetprices.com>,
a shopping search engine used by consumers to compare electronic and household
products. The <streetprices.com>
trademark was registered by Complainant on the principal register of the
U.S. Patent and Trademark Office (“USPTO”) on December 9, 2008.
Complainant alleges that Respondent’s <streetprice.com>
website advertises household and electronic goods, but does not
contain product information and directs users to websites other than the
Complainant´s site. Complainant argues
that “Street Prices” is not an English word and that Respondent´s domain
name, <streetprice.com> is confusingly similar to Complainant’s mark
because the only difference is that Respondent´s domain name is singular.
Complainant argues that Respondent´s domain
name is nothing more than typo-squatting in that a typographical error by
consumer could misdirect users into thinking they have reached Complainant´s
website and thus be disappointed by the content. Complainant alleges this may cause consumers
to use a different comparison shopping engine, thus damaging its
<streetprices.com> mark.
2.
Respondent has no rights/legitimate interests in Streetprice.com
.
Complainant alleges that it has not given Respondent permission to use
its mark and that Respondent has no rights or legitimate interest in <streetprice.com>
because it has not registered the domain name as a mark. Furthermore, Complainant argues that
Respondent is not using the domain name in connection with a bona fide offering
of goods and services or other legitimate non-commercial use. Complainant also argues that Respondent´s
domain name is parked on a landing page containing only pay-per-click (PPC)
advertising, thus earning Respondent PPC fees.
Complainant argues that Respondent´s domain name purports to advertise
electronic devices when Respondent generally has no connection with
electronics. This is evidence that
Respondent is attempting to divert users from Complainant´s website.
Complainant alleges that the website to which the <streetprice.com>
domain name resolves is just holding a place on the web and that Respondent is
not trying through this website to engage in the selling of products.
Complainant further alleges that Respondent is engaging in trademark
infringement by misdirecting potential consumers and earning money in the
process. Complainant finally alleges
that Respondent is not known as <streetprice.com>.
3.
Streetprice.com was registered in bad
faith.
Complainant contends that it has requested that Respondent stop using
its mark but that it has not received any response, defense or
explanation. Complainant believes that
Respondent is intentionally trying to attract internet users to its website for
commercial gain by creating a likelihood of confusion.
Complainant argues that Respondent registered its domain name on
December 4, 1998, a year after Complainant began using its own website, and
that the “strikingly similar” and “fanciful nature” of the term “street prices”
makes it hard to avoid the conclusion that Respondent is attempting to
interfere with Complainant´s business.
Complainant also alleges that Respondent cannot reasonably assert that
it merely “stumbled” upon the term “street price” given that it is not an
English word and that a mere search engine search of said term would have
revealed Complainant´s website as the first item listed. Furthermore, when approached by Complainant,
Respondent offered to sell the domain name for US$100,000. Complainant argues
that this is evidence that Respondent purchased the domain name with the intent
of selling the domain name to Complainant.
Respondent´s out of pocket costs for the domain name are estimated at
about $8.00/year.
B. Respondent
1.
Streetprice.com is NOT
identical or confusingly similar to streetprices.com.
Respondent argues that its domain name is not confusingly similar to
Complainant´s mark because “Street Price” is a descriptive term and therefore
the use of a minor difference, here the exclusion of an “s”, is sufficient to
eliminate the finding of confusing similarity.
Respondent also points to the fact that the USPTO found Complainant´s
mark “Street Price” to be descriptive.
Respondent cites a letter from the USPTO to Complainant where it is
indicated that the trademark registration applies to the combination of word
and design.
2.
Respondent has rights/legitimate interests in Streetprice.com.
Respondent alleges that is has a legitimate interest and rights in the
disputed domain name and that it registered <streetprice.com> over
ten years ago and in good faith based on its descriptive meaning and without
knowledge of Complainant´s trademark.
Respondent argues that the Panel must find for Respondent on this issue
if it can find no evidence that Respondent registered the disputed domain name
without the intent to target Complainant´s mark.
Respondent argues that it registered the domain name based on its
descriptive nature and that this is corroborated by Respondent´s numerous other
descriptive and common word domain names such as <bigsavings.com>,
<economysites.com>, <cheaplaptops.com> and many others such as
<snoring.com>, <strength.com>, and <sweating.com>.
Respondent argues that there is no evidence supporting an inference that
Respondent registered the domain name because it incorporates Complainant´s
mark or that Respondent registered the domain name with Complainant´s mark in
mind.
Respondent further argues that receiving a share of revenues for PPC
fees is a legitimate interest.
Respondent also claims that its domain name ads are auto generated by
Yahoo! and that its website historically contains a wide range of services and
goods, not only electronics.
3.
Streetprice.com was NOT registered in
bad faith.
Respondent claims that there is no evidence of bad faith registration
since it registered the domain name when its previous registration lapsed and
that this negates a finding of bad faith because “the expiration of a domain
name can be interpreted as a signal that any trademark claim to the domain name
was abandoned and that the domain name could be registered in good faith.”
Respondent argues that it is not attempting to compete with or disrupt Complainant’s
business. Furthermore, Respondent argues
that, absent direct proof, there can be no finding of bad faith registration
when a descriptive term domain name is at issue.
Respondent also argues that Complainant´s failure to timely bring an
action indicates that Complainant does not believe the domain name was
registered in bad faith.
Respondent also denies any allegations that it offered to sell the
disputed domain name for US$100,000.
Finally, Respondent states that Complainant has abused the ICANN policy
by bringing this claim, and Respondent thus requests a finding of reverse
domain name hijacking (“RDNH”).
DISCUSSION
& FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis
of the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the
domain name has been registered and is being used in bad faith.
Pursuant to ICANN policy the Panel must meet a two
prong analysis. First, the Panel must
find that Complainant has sufficiently demonstrated rights in a mark. Secondly, Complainant must show that the
disputed domain name is confusingly similar to the mark in which it has rights. See Brown v. Julie Brown Club, D2000-1628 (WIPO Feb. 13, 2001); Celine Dion
& Sony Music Entm’t Canada, Inc v. Jeff Burger, D2000-1838 (WIPO Feb.
13, 2001).
Here, Complainant has been using the “street prices” mark in
connection with a website offering discounted consumer electronics since
November 1, 1997. Complainant submits
evidence of registration of the <streetprices.com> with the
USPTO (Reg. No. 3,542,387 issued Dec. 9, 2008).
This trademark registration lists the date of first use as November 1,
1997.
Respondent nevertheless argues that the term “street
prices” is descriptive and submits evidence that an internet search for the
term “street price” reveals 945, 000 results.
As further evidence Respondent notes that the USPTO registered
Complainant´s trademark on the supplemental register and required Complainant
to disclaim “street prices” from its design mark.
Although it is true that the USPTO initially placed
Complainant´s mark on the supplemental register and did require Complainant to
disclaim “street prices” from its design mark when it first applied to register
those marks in 2000, a review of Complainant´s registrations on the
publicly-available database on the USPTO’s
website reveals that the USPTO subsequently registered Complainant´s
mark on the principal register after Complainant made a showing of required
distinctiveness under Section 2(f) of the Lanham Act. Therefore, Complainant does own a valid
registered trademark of <streetprices.com>.
Where complainant demonstrates that it owns a registered trademark, and
in absence of compelling evidence from Respondent that the registration is
invalid, Complainant has satisfied the prerequisite of having trademark
rights. Thus, this Panel finds that
Complainant has trademark rights in <streetprices.com>.
Complainant argues that the disputed domain name is
confusingly similar to its own <streetprices.com> since the only difference is that
the disputed domain name changes a plural to singular removing the letter “s”
found at the end of the mark.
In response, Respondent contends that the <streetprice.com> domain
name is comprised of common, descriptive terms and as such cannot be found to
be identical to Complainant’s mark. This
Panel finds that such determination is not necessary under the Policy and turns
to whether or not the disputed domain name is confusingly similar. See Tammy Upwall and Michael Upwall d/b/a
Got Beauty v. Kam Yaghobian d/b/a Got beauty products, FA 1122960 (Nat.
Arb. Forum Feb. 21, 2008) (“Respondent contends that the
<gotbeautyproducts.com> domain name is comprised of generic terms, and
that Complainant is not exclusively associated with the GOT BEAUTY mark. Therefore, Respondent alleges that the
<gotbeautyproducts.com> domain name is not confusingly similar to
Complainant’s mark. The Panel finds that
such a determination is not necessary under Policy ¶ 4(a)(i) since this portion
of the Policy considers only whether Complainant has rights in the mark and
whether the disputed domain name is identical or confusingly similar to
Complainant’s mark.”).
Complainant has demonstrated that it owns the
trademark <streetprices.com>. The incorporation of a trademark in its
entirety in a respondent’s domain name is sufficient to establish that a domain
name is identical or confusingly similar See Quixtar Investments, Inc v. Dennis Hoffman,
D2000-0253 (WIPO May 29, 2000) (finding that QUIXTAR and
<quixtarmortgage.com> are legally identical). The disputed domain name contains the
singular version of Complainant´s trademark. Thus, the only difference between the disputed
domain name and Complainant´s mark is the exclusion of the letter “s”. This minor deviation is not a sufficient
deviation from Complainant´s mark to render the domain name dissimilar from the
trademark. Indeed, some consumers could
easily mistakenly type the disputed domain name instead of Complainant´s mark
and reach Respondent´s site via mere typographical error. This Panel therefore finds that the disputed
domain name is confusingly similar to a mark in which Complainant has rights.
It is generally accepted that the obligation is on Complainant to
establish a prima facie case under Policy ¶ 4(a)(ii) that the Respondent
has no right or legitimate interest in the domain name and that, when that prima
facie case is established, the burden of production shifts to Respondent to
rebut it by producing evidence that it does have such a right or legitimate
interest. Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”).
In the present case, Complainant has established a prima facie
case by virtue of its “street prices” trademark and the evidence it has
submitted with respect to advertisements on the website to which the disputed
domain name resolves. Respondent must
then come forward with evidence to rebut Complainant´s prima facie case.
In the present case, Respondent seeks to achieve that by advancing two
arguments. The first argument is that it
has acquired a right or legitimate interest in the domain name because it
consists of a wholly descriptive term and the evidence shows that the domain
name was not registered with Complainant’s trademark in mind. The second argument is that it has been using
the disputed domain name in connection with a bona fide offering of services.
As to the first argument, it is now clear that there are decided UDRP
cases that support that submission, namely, the two decisions cited by
Respondent, Canadadrugs.com et al v. ASM Bioventure, No.568743 (Nat.
Arb. Forum Nov. 29, 2005) and Baccus Gate Corp. et al,. v. CKV et al.,
D2008-0321(WIPO May 20, 2008), and others such as Kaleidoscope Imaging, Inc.
v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the
respondent was using the <kaleidoscope.com> domain name for a bona
fide offering of goods or services because the term was “generic” and
respondent was using the disputed domain name as a search tool for Internet
users interested in kaleidoscopes). If,
though, the domain name is registered to take advantage of a trademark, and is
used in an infringing manner to offer competitive good or services, that would
not constitute a legitimate interest. No
Zebra Network Ltda v. Baixaki.com, Inc., D2009-1071 (WIPO
Oct. 26, 2009).
Applying these principles to the facts of the present case, it must be
equally clear that the expression “street price” is descriptive because it
describes, in a highly graphic manner, the price that one could expect to pay
for goods on the street or in an open market, and therefore perhaps lower than
in department stores or as advertised.
Respondent also submits evidence that a terms search on the Google
search engine for “street price” yielded 945,000 third-party results and that
the meaning of the phrase “street price” is “the average or usual price charged
for a product, especially one that is rarely sold at the Manufacturer’s
Suggested Retail Price.”
Against this, Complainant says that the expression is not a word at all,
which is literally correct, because it is two words, but the principle is the
same, for it is the combination of the two words that creates the generic
expression, especially in the context of domain names were it is common to
disregard spaces and run words together.
It should also be said here that part of Complainant’s case is that its
trademark has already acquired secondary meaning and that is how it comes to
have the registration of the mark that it does.
Indeed, an examination of the papers in the USPTO that are on the public
record shows the substantial case that secondary meaning had been acquired by
Complainant that it submitted to the USPTO to reverse the Trademark Examiner’s
initial refusal to register the trademark on the principal register.
However, that is not the question here, for there is no evidence that
Respondent knew of Complainant’s activities that gave secondary meaning to the
trademark and, in any event, the question is about whether the domain name is
descriptive, which it is, not the nature of the trademark. Clearly, the structure of paragraph 4 of the
Policy is that paragraph 4(a)(i) deals with the standing of the Complainant to
bring the Complaint, which is shown if and when it proves that it has rights in
a trademark. But paragraph 4(a)(ii) shifts
the attention to the respondent and asks if it has a right or legitimate
interest in the domain name. A Panel is
then at large to examine whether there are any circumstances showing that the
Respondent has such a right or legitimate interest. See FilmNet Inc. v. Onetz, FA 96196
(Nat. Arb. Forum Feb. 12, 2001) (finding that Complainant failed to establish
that Respondent did not have rights or legitimate interests in the
<filmnet.com> domain name where the disputed domain name was wholly
comprised of generic words, even though Complainant was the owner of the
registered FILMNET mark) and also Rollerblade, Inc. v. CBNO & Ray Redican
Jr., D2000-0427 (WIPO Aug. 24, 2000) (finding that "genericness, if
established, will defeat a claim of trademark rights, even in a mark which
is the subject of an incontestable registration" (emphasis
added)).
Moreover, Respondent’s case is that it also registered other domain
names consisting of similar descriptive expressions such as
<bigsavings.com>, a practice noted as the modus operandi of
respondent in Sweeps Vacuum & Repair Center, Inc v. Nett Corp.,
D2001-0031 (WIPO Apr. 13, 2001) and as “using the domain name not in the
trademark sense, but in the descriptive sense, describing the types of
businesses (sweepstakes related) listed on the directory page. This Respondent is entitled to do.”
All of these factors tend to support the conclusion that the terms of
the domain name are descriptive, giving the Respondent a legitimate interest in
the domain name so long as the goods and services offered on the website are
directly related to that descriptive meaning.
Respondent, however, has an additional element to show, namely, that in
registering the domain name, it was not doing so because of Complainant’s
trademark or, as it is often put, that it was not targeting Complainant. In the present case, the Respondent’s only
direct evidence is of the company’s President, who stated that he did not
register the domain name with Complainant’s trademark in mind. Indeed, that claim seems more likely than not
to be true, for the statement shows that Respondent had access to and
registered many such descriptive expressions and it is apparent that Respondent
registers such domain names as part of its business and for the reason that
they are descriptive. Moreover, at the
time when Respondent registered this domain name, Complainant’s website was in
operation for only one year, there has been no showing of whether that website
had achieved commercial success and/or was generally known, and Complainant
certainly has not shown that it had any trademark rights at that time; to the
contrary, that Complainant assented to the registration of its trademark on the
supplemental register in 2001 suggests that Complainant was unable to show
trademark rights at that time, let alone three years earlier, in 1998, when the
domain name was registered by Respondent.
However, Complainant also says that it can be inferred that it was
targeted because Respondent has not used the domain name to advertise goods
within the entire ambit of the domain name, which it could have done, but only
the electronics that Complainant itself sells.
But Respondent has shown by evidence that, in 2000, 2004, 2005, 2006 and
2007, its website was in fact used for promoting a very wide selection of goods
and services that have street prices and that therefore come within the generic
expression in the domain name.
On the evidence, Respondent has therefore shown that its domain name
consists of a wholly descriptive expression that it has been used to promote
goods and services coming within that description and that the domain name was
not registered to target Complainant or its trademark.
With respect to Respondent´s second argument,
that it has been using the disputed domain name in connection with a bona
fide offering of services since it acquired the <streetprice.com> domain name in 1998 and that this
gives it a right or legitimate interest in the domain name by virtue of Policy
¶ 4(c)(i), in view of the matters already addressed, the conclusion must be
that the use of the domain name by Respondent constitutes such a bona fide
use. That conclusion is consistent with
prior UDRP decisions, See McMullen Argus Publ’g Inc. v. Moniker Privacy
Servs., D2007-0676 (WIPO July 24, 2007) (holding that “pay-per-click websites
are not in and of themselves unlawful or illegitimate”); see also Eastbay Corp. v. VerandaGlobal.com,
Inc., FA 105983
(Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the
disputed domain name, which was comprised of generic terms, as a portal to a
commercial website featuring various advertisements and links, constituted a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i)), as well
as the many decisions cited by Respondent.
Complainant’s evidence is that it made its claim on Respondent by a
cease and desist letter dated January 23, 2009 and, by implication, the receipt
of that letter was, on the evidence, the first notice given to Respondent of
the dispute. That being so, and the use
of the domain name being a bona fide offering of goods and services, and
in the absence of any evidence that the use was infringing or otherwise was
conducted in a way to target Complainant or take advantage of its trademark
rights, it was an offering of goods and services that had been underway for
several years before Respondent received notice of the dispute and the matter
therefore falls squarely within Policy ¶ 4(c)(i). This also gives Respondent a right or
legitimate interest in the domain name.
As a result, Respondent is able to and has established a rights and
legitimate interest in the disputed domain name.
Since Complainant has not satisfied Policy ¶ 4(a)(ii), a further
analysis of this element of the Policy is not required. See Creative Curb v. Edgetec Int’l Pty.
Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that, because the
complainant must prove all three elements under the Policy, the complainant’s
failure to prove one of the elements makes further inquiry into the remaining
element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard
Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to
inquire into the respondent’s rights or legitimate interests or its
registration and use in bad faith where the complainant could not satisfy the
requirements of Policy ¶ 4(a)(i)). However, this Panel will comment briefly as
to its findings on this element given Respondent’s request for a finding of
RDNH.
Previous cases have held that bad faith use or registration can be
inferred from the totality of the circumstances surrounding registration and
use of a domain name. See XM
Satellite Radio Inc v. Michael Bakker, FA 861120 (Nat. Arb. Forum Feb. 27,
2007); Twentieth Century Fox Film Corp. v. David A. Risser, FA 93761
(Nat. Arb. Forum May 18, 2000); Denver Newspaper Agency v. Jobing.com LLC,
FA 1282148 (Nat. Arb. Forum Oct. 16, 2009).
In the present case, Respondent registered the disputed domain name on
December 4, 1998, about one year after Complainant began using its mark. At this point in time, as noted above,
Complainant´s mark was not registered by the USPTO (even on the supplemental
register) and was likely a merely descriptive term. Respondent registered the disputed domain
name with the intent to profit from the descriptive nature of the terms by
generating revenue from PPC ads related to shopping at discounted “street
price” prices. The record provided
supports that Respondent has consistently continued this use since the time of
registration. Since there is no evidence
that Respondent attempted to take advantage of Complainant´s goodwill in the “street prices” trademark, this Panel also finds that
Respondent has not registered and used the disputed domain name in bad faith.
Respondent asserts a claim against Complainant
for RDNH. Respondent relies on
essentially two arguments. First,
Respondent claims that the Complaint is without merit. Second, Respondent states that the
Complainant knew or should have know it could not prove the essential elements
under the Policy, thus asserting that Complainant acted in bad faith. Although the Panel is not insensitive to such
claims, it finds that such a result is not warranted on this record. Complainant may not have had a winning
Complaint, but it did own a trademark registration for <streetprices.com>,
the question of legitimate interest was a close one, and the Complainant may
have suspected that the domain name was being used in bad faith.
DECISION
Having not established all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Calvin A. Hamilton (Chair), David H.
Bernstein, The Honourable Neil Anthony Brown QC as Panelists.
Dated: November10, 2009
National
Arbitration Forum
Separate opinion of
the honourable Neil Anthony brown concerning confusing similarity.
Panellist Brown respectfully disagrees with this conclusion and would
find that the domain name is not confusingly similar to the trademark in
question. That is so because although, as the majority points out, the
trademark was eventually accepted as having acquired secondary meaning for the
purposes of registration, the Panel still has to decide in the words of the
Policy whether the domain name is confusingly similar to the registered
trademark by comparing both expressions. The fact of registration cannot negate
that requirement in the Policy. Indeed, in the United States case Entrepreneur Media , Inc v. Smith, 279
F.3d 1135, 1147 ( 9th Cir.2002), quoted in Tire Discounters, Inc v. TireDiscounter.com No.679485 ( NAF June
14, 2006), cited by Respondent , made
exactly that point in a different context but apparently faced with similar
evidence. It said, or at least may be paraphrased as having said (at
www.finegan.com/EntrepreneurMediaIncvSmith) : “Although
plaintiff's mark was the subject of an incontestable federal registration, the
mark was nonetheless inherently weak, and there were many third-party uses of
ENTREPRENEUR in magazine names, business names, and domain names.”
That being so, the question is whether the domain name
<streetprice.com> is confusingly similar to the STREETPRICES.COM
trademark which describes in the most general way the street or discounted prices of undefined
objects but, presumably, of goods and services in general. It is, of course,
tempting to conclude that the mere omission of the letter “s” in the domain
name generates a confusing similarity. But, as was pointed out in Tire Discounters, Inc. v. TireDiscounters.com
(supra), where the domain name
<tirediscounter.com> was held not to be confusingly similar to the
trademark TIRE DISCOUNTERS, it was the absence of the “s” that made the
difference, for, as the three person panel said: “The omission of the letter
“s” from the mark is one of those small differences that matters in this
context”. It matters because the trademark itself is of a very generalized
nature and the difference in spelling in the domain name suggests that the
domain name may well be dealing with a different subject than the trademark.
Thus it cannot be assumed, on the balance of probabilities,
that the internet user, considering both expressions, would conclude that the
street price invoked by the domain name was related to the street prices
invoked by the trademark. Indeed, the internet user who thought about it at all
may well conclude that the domain name was referring to the street price of
different objects and certainly a different offering of street prices from
those covered by the trademark.
The domain name is therefore not confusingly similar to the
trademark.
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