If a domain name says the goods are fake, that’s not confusingly similar.
On the face of it, it might seem appealing for a trademark owner to use UDRP to take down a web site selling counterfeit goods. But trademark holders need to understand that UDRP is for cybersquatting, and not all sites selling counterfeit goods meet the three requirements of winning a UDRP.
The latest example is Oakley, which failed to recover the domain name MyFakeOakleySunglasses.com.
It’s a no brainer that this site is selling fake Oakley sunglasses. It says it in the domain name and on the site. But the domain name is not confusingly similar to a mark in which Oakley has rights because no one would go to the web site thinking it is Oakley’s.
Here’s how panelist Houston Putnam Lowry explained it:
This Panel does not see a confusing similarity between Complainant’s mark and the disputed domain name, see Homer TLC, Inc. v GreenPeople, FA550345 (Nat. Arb. Forum October 25, 2005). Everybody knows what the work “fake” means. The word “fake” appears before the trademark in the domain name. The web site makes it pretty clear these are counterfeit goods. People are going to this web site because they know it isn’t affiliated with Complainant. People are buying these good because the purchasers want to pretend they are Complainant’s goods. While it would seem obvious there is trademark infringement, that is not the test under the UDRP.
Oakley is by no means the first company to try to take down a counterfeit goods site through UDRP. Recently, Dyson ran into problems taking down sites selling bladeless fans. The circumstances of those cases was different since Dyson’s name wasn’t in the domain names.
Had the Oakley case been something like MyOakleySunglasses.com then Oakley would probably win. But the addition of ‘fake’ makes it clear that the site isn’t affiliated with Oakley.
Although trademark holders might be frustrated when they lose these cases, it’s really a game of whack-a-mole anyway. If someone is so brazen as to sell fake goods at MyFakeOakleySunglasses.com, don’t you think they’ll just create another similar site if you get control of their domain name?