"Confusingly Similar" in the Canadian Domain Name Dispute Resolution Policy"

By Sheldon Burshtein^*

The Canadian Internet Registration Authority (CIRA) has adopted a domain name dispute resolution policy for the .ca registry. The CIRA Domain Name Dispute Resolution Policy (CDRP) and its related procedural rules, the CIRA Domain Name Dispute Resolution Rules (Rules), became operative on June 27, 2002.¹ The CDRP provides a domain name dispute resolution procedure that adopts many aspects of the Uniform Dispute Resolution Policy²(UDRP) adopted by the World Intellectual Property Organization in 1999. However, there are a number of very important differences from the UDRP. The first group of differences is directed to Canadian issues, including the Canadian Presence Requirements for Registrants.³ The second category of variations relates to the significantly narrower scope of complaint which can be decided under the CDRP. The third group is directed to procedural variations. These differences, which permeate the CDRP and the Rules, require careful attention by those who seek to initiate a proceeding, registrants who must respond to a complaint, and those who counsel others in connection with the CDRP. While other articles have discussed the CDRP,⁴ this article focuses on the interpretation of the term "confusingly similar" in the basis for a complaint under the CDRP.

A .ca domain name registrant must submit to a CDRP proceeding if a complainant asserts in a complaint submitted in compliance with the CDRP and the Rules that:

(1) the registrant's .ca domain name is confusingly similar to a mark in which the complainant had rights prior to the date of registration of the domain name and continues to have such rights;⁵

(2) the registrant has no legitimate interest in the domain name;⁶ and

(3) the registrant has registered the domain name in bad faith. ⁷ (emphasis added)

Even if the complainant proves elements (1) and (3) and provides some evidence of element (2), the registrant will succeed in the proceeding if the registrant proves, on a balance of probabilities, that the registrant has a legitimate interest in the domain name.⁸

The first element of the basis for complaint requires the complainant to establish that the registrant’s .ca domain name is "confusingly similar" to a mark in which the complainant had rights prior to the date of registration of the domain name and continues to have such rights. Both "mark"⁹ and "rights"¹⁰ are defined in the CDRP.

The CDRP defines "confusingly similar" very narrowly. A domain name is "confusingly similar" to a mark if the domain name so nearly resembles the mark in appearance, sound or the ideas suggested by the mark as to be likely to be mistaken for the mark.¹¹ This definition is based on resemblance rather than confusion. The term "confusingly similar" is not used in the Canadian Trade-marks Act (TMA)¹²; the term has been adopted from the UDRP.¹³ The definition borrows from, although it is not identical to, the preamble of Subsection 9(1) of the TMA, which relates to prohibited marks. Subsection 9(1) provides that "No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for … [any of a lengthy list of a prohibited marks]" (emphasis added).

The definition of confusingly similar in the CDRP does not include reference to an identical mark or to a mark consisting of another mark, but only to one which so nearly resembles a mark as to be likely to be mistaken therefor. While an identical domain name is likely to be held to resemble a mark, it may be more difficult to establish that a domain name like «trademarksucks.ca» is confusingly similar to the trade-mark TRADEMARK.

The choice of a definition of "confusingly similar" based purely on visual, aural and connotational resemblance is a significant departure from the Draft CDRP posted by CIRA in September 2000 (Initial Draft)¹⁴ and the texts of the UDRP and the United States Anticybersquatting Consumer Protection Act (ACPA)¹⁵. The Initial Draft made reference to the more traditional test of confusion in Canadian trade-mark law, with appropriate modification for comparison of a mark with a domain name. It provided that a domain name is "Confusing" with a mark if the registration or use of the domain name would be likely to lead to the inference in Canada that: (a) any website accessible under the domain name is associated with a person who has rights in the mark; (b) any wares or services with which the domain name is associated or which are sold, leased, hired, offered for sale, leased or hired, performed or offered for performance at a website accessible under the domain name are manufactured, sold, leased, hired or performed by a person who has rights in the mark; or (c) any business with which the domain name is associated or which is operated or advertised at a website accessible under the domain name is operated by a person who has rights in the mark.¹⁶

The Initial Draft then went on to provide that, in determining whether a domain name is "confusing" with a mark referenced in (a), (b) or (c) above, regard would be had to all the surrounding circumstances, including: (i) the inherent distinctiveness in Canada of each of the domain name and the mark, and the extent to which each of the domain name and the mark has become known in Canada; (ii) the length of time each of the domain name and the mark has been used or utilized in Canada; (iii) the nature of the wares, services and business in association with which each of the domain name and the mark has been or may be used in Canada; (iv) the nature of the trade or other activity in association with which each of the domain name and the mark has been or may be used or utilized in Canada; and (v) the degree of resemblance between the domain name and the mark in appearance or sound or the ideas suggested by them.¹⁷

The definition of confusion in the Initial Draft was to a large extent consistent with Section 6 of the TMA. In particular, it is apparent that the proposed factors to assess confusion were adopted from Subsection 6(5). Subsection 6(5) provides that, in determining whether trade-marks or trade-names are confusing, one must have regard to all the surrounding circumstances, including: (i) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;¹⁸ (ii) the length of time the trade-marks or the trade-names have been in use;¹⁹ (iii) the nature of the wares, services or business;²⁰ (iv) the nature of the trade; ²¹and (v) the degree of resemblance between the trade-marks or the trade-names in appearance or sound or in the ideas suggested by them.²²

A comparison of the final definition of "confusingly similar" in the CDRP with that of "confusing" in the Initial Draft reveals that only the last factor, dealing with resemblance, has been included. While the approach adopted by CIRA may have the advantage of simplifying the determination of what is "confusingly similar", the definition in the CDRP ignores other factors relevant to confusion, or the absence thereof, in the marketplace.

A domain name is, under the CDRP, confusingly similar to a mark if the domain name so nearly resembles the mark in appearance, sound or the ideas suggested by the mark as to be likely to be mistaken for the mark. Given the similarity between the preamble of Subsection 9(1) of the TMA and the CDRP definition, it is instructive to consider the test for "resemblance" under Subsection 9(1). The test under Subsection 9(1) is whether a person, on a first impression, knowing the protected mark only and having an imperfect recollection of it, would likely be deceived or confused by the other’s mark.²³ If a mark so nearly resembles the protected mark as to be likely to be mistaken therefor, the use of that mark may be prohibited even in those cases where there is no likelihood of confusion.²⁴

Under Subsection 9(1), resemblance is the only factor to be considered. Other considerations deemed relevant in trade-mark cases, such as the other factors listed in subsection 6(5) are not relevant.²⁵ In determining resemblance under Subsection 9(1), the courts have rejected a "straight comparison" test, which involves a determination of whether a mark is "identical to, or almost the same as" the protected mark.²⁶ The question must be determined in the context of whether a person, who, on a first impression, knowing one mark only and having an imperfect recollection of it, would likely be deceived or confused.²⁷ This first impression and imperfect recollection test appears to be broader and more protective than one of straight comparison on a "close and careful look".²⁸ The first word or first syllable in a mark is the most important.²⁹ The courts have also recognized the notion of a "family of marks", namely that a series of marks all having the same features are owned by the same person.³⁰

The rationale for the resemblance test in Subsection 9(1) of the TMA is to prohibit any person from capitalizing on a public symbol and adopting it for its own wares or services.³¹ Once a symbol is protected under Subsection 9(1), others are prohibited from using that symbol.³² The prohibitive language of Subsection 9(1) is intended to create a separate and stronger protective regime for marks where there is a concern for public or quasi-public value, respectability or credibility. The protection afforded to prohibited marks is meant to be different than the protection afforded to marks used in marketplace competition.

The consequence of the choice of a resemblance test in the CDRP is that the owner of a trade-mark like UNITED for use in association with passenger air transportation services may be able to establish that its mark is confusingly similar to the domain name «united.ca» used for a website selling candy bars, even though there are numerous others who, without any likelihood of confusion, use UNITED as a trade-mark or trade name for different goods, services and businesses. What the resemblance test may not, but a confusion test might, capture is a phonetically different French equivalent of an English trade-mark or vice versa. Under a confusion test, a bilingual equivalent might be held confusing.³³ It is also unclear whether, under the resemblance test, the domain name «orange.ca» would be found to be confusingly similar with a design mark consisting only of a picture of an orange. In each of these cases, under the confusion test all of the relevant factors would be considered, while the resemblance test would merely assess the resemblance of the domain name to the trade-mark.³⁴

While the resemblance test in the CDRP departs from the de jure test in the UDRP and the ACPA, the CDRP test for confusing similarity may not depart much from the de facto standard applied in cases decided under the ACPA and the UDRP. Under the ACPA, courts have ruled that a domain name can be found confusingly similar to a trade-mark without a showing of a likelihood of confusion required in trade-mark cases.³⁵ It has been held, although not consistently, that the ACPA simply intended a comparison of the trade-mark with the domain name and not a full-fledged likelihood of confusion analysis.³⁶

In most cases under the UDRP, there is little analysis of whether the registrant’s domain name is identical, or confusingly similar, to a trade-mark of the complainant. Where there is any analysis under the UDRP, it has been more of a visceral comparison, and has not followed the traditional analysis of confusion under trade-mark law such as the TMA. Where the complainant can show that the domain name is identical to its trade-mark, it is usually relieved of the burden of showing a likelihood of confusion, even if, under the relevant law, mere identity is not sufficient to establish a likelihood of confusion.³⁷

Under the UDRP, there has been no uniformity over the issue of confusing similarity in the case of "sucks" domain names. Some panels have held that there is no confusing similarity between the mark TRADEMARK and the domain name «trademarksucks.com» because there is no real possibility of confusion.³⁸ In the decisions favouring registrants, panelists have generally concluded that the domain name was not identical or confusingly similar to the complainant’s mark.³⁹ However, in "sucks" cases, decisions under the UDRP are more likely to favour the complainant. Some of the decisions favouring complainants have held that consumers might actually be confused on the basis that search engines will retrieve both the complainant’s site and the "sucks" site, potentially diverting Internet users.⁴⁰ Other UDRP decisions start with the anticybersquatting intent of the UDRP and interpret "identical or confusingly similar" to mean that, whenever a domain name incorporates another’s mark or a confusingly similar approximation thereof, this factor is satisfied regardless of other elements in the domain name.⁴¹

Under the UDRP, domain names comprising famous trade-marks combined with the word "nude"⁴² or "sex"⁴³ are subject to an analysis similar to the "sucks" names, but UDRP panels have been more likely to find domain names "confusingly similar" with marks because "nude" and "sex" are not as obviously dissociated from the trade-mark owner as "sucks".

We await with interest the first CDRP decisions interpreting "confusingly similar" and hope that the panelists will not confuse the test.