Obvious cybersquatter wins UDRP
Here’s a very interesting Panel decision that came out of WIPO recently. Starwood Hotels, which owns the “W” hotel brand and trademark, filed a UDRP on several domain names registered by an individual with a history of cybersquatting, as acknowledged by the Panelist. Even though the alleged cybersquatter didn’t respond to the complaint, the Panelist found that Starwood failed to prove up its rights in the claimed mark at issue. What happened here?
The mark at issue in this case was the single-letter mark W, and W HOTELS. The Panelist discussed at length the analysis required to evaluate the first prong of the UDRP, and ultimately decided that while there was a mark at issue, it wasn’t particularly strong.
It is self-evident that the letter “w” is not inherently distinctive.
…
The Panel considers the W mark to be inherently weak because the letter W has a common use, pre-existing and separate to its association with the Complainant. The Complainant argues and presents evidence that its mark has become “well known”. However, the Complainant’s evidence in this respect is primarily from its own websites. That evidence also indicates that the Complainant’s use of its W mark often occurs in conjunction with its W HOTELS mark, and in the context of its advertisement of hotel services more generally. In the Panel’s view, this is not strong evidence that the Complainant’s W mark, on its own, has become well-known. There is even less evidence that the letter W, separate to its representation in the Complainant’s mark, has any particular association with the Complainant.
The Complainant’s W HOTELS mark could also be regarded as weak considering comparable marks the subject of cases under the Policy. (See e.g.Deutsche Telekom AG v. foxQ, WIPO Case No. D2004-0102 concerning the marks T-ONLINE and T ONLINE. In that case, the then panel noted that “As the word ‘online’ is descriptive, and the Complainant’s trademarks only consists of this word with the addition of a ‘T’, the overall distinctiveness of the trademarks T-ONLINE and T ONLINE must be regarded as small.” If that mark is weak, a single letter mark is even more so.)
…
This Panel considers that the broad potential association of the letter “w” make it unlikely that Internet users would confuse the disputed domain names and the Complainant’s mark.
…
Represented as a single letter “w” in the disputed domain names, the capacity to recognize the Complainant’s mark is marginal, particularly where the letter is attached to geographic descriptions which themselves do not form part of a mark in which the Complainant has rights. Each of the disputed domain names incorporate the Complainant’s W mark in much the same way. Each relevant domain name uses “w” and hyphenates it with a geographic description. This is the case for <w-atlanta-buckhead.com>, <w-atlanta-perimeter-center.com>, <w-dallas-victory.com>, <w-istanbul.com>, <w-new-york-the-court.com>, <w-orleans-french-quarter.com>, and <w-san-diego.com>. The only element of these domains which textually corresponds to the Complainant’s mark is the letter “w”. The Panel does not consider that the Complainant’s W mark is relatively substantial in comparison to these domain names.
This is, in my opinion, similar to the analysis that occurs for three-letter domain names, which are often capable of being read as acronyms for a very wide variety of businesses or whatever. Because there’s so much that a single W could stand for, particularly in combination with (arguably) plain geographic descriptors, there’s no clear way to equate these domains with the Complainant’s mark.
Or is there?
The Panel is in little doubt that the Respondent lacks rights or legitimate interests, and has registered and used the disputed domain names in bad faith. Among other things, the Respondent has provided no evidence of having rights or legitimate interests, despite the Complainant’s case against it. The Respondent also has a history of cybersquatting. The content of the Respondent’s websites strongly suggest that the Respondent was motivated to register the disputed domain names in an attempt to exploit confusion with the Complainant’s marks.
Assuming that these domains were registered to capitalize on that confusion, doesn’t that sort of swallow the mark comparison? If you’re intentionally capitalizing on the confusion, don’t you by definition have confusing similarity? Maybe not. And here’s the Panelist’s reasoning why:
While the letter W is first appearing in the disputed domain names and separated by a hyphen, there is insufficient evidence to conclude that Internet users might particularly associate the letter W in these contexts with the Complainant. To find otherwise would, in this Panel’s view, be inconsistent with the very diverse associations that a single letter and a geographic location may carry. By comparison would “m-newyork” be confusingly similar to the McDonalds “golden arches” M trademark; or “f-internet” be confusingly similar to the Facebook F trademark? This Panelist doubts it.
I think those examples are right on. But I’m not convinced that there’s a direct parallel between McDonald’s, which probably has thousands of locations in New York, and a “W” hotel, which has 1(?) hotel in the geographic location indicated by the domain name.
An interesting case. And one that might end up proceeding to the courts. However, the use of dashes in domain names tends to decrease its desirability, and these domains have a bunch of dashes, plus they are pretty long strings as well. One wonders if the domains are even worth the expense of pursuing. Unless, of course, there’s been some documented issues with customers; then maybe it’s worth their time and expense to take action and stop the problem.
Tagged confusingly similar, confusion, denied, registered trademarks, secondary meaning, WIPO