This really shouldn’t be that confusing of an issue.
The bar has just been lowered for showing confusing similarity in UDRP decisions, courtesy of a decision at National Arbitration Forum.
At issue are the domain names MyBizHomepage.com and MyBizDashboard.com. The complainant in the case, MBO Partners, Inc, operates MyBizOffice.com and has a trademark for “MyBizOffice”. Note that MBO Partners does not have a trademark for “MyBiz”, which is a very common and generic term.
Yet National Arbitration Forum panelist Tyrus R. Atkinson, Jr found a way to say that the respondent’s domain names were confusingly similar to MBO Partners’ mark:
Complainant contends that Respondent’s use of the “mybizâ€ portion of Complainant’s mark with the generic terms “homepageâ€ or “dashboardâ€ does not render the disputed domain names distinct from Complainant’s mark. Complainant also notes that the addition of the generic top-level domain (“gTLDâ€) “comâ€ does not distinguish the disputed domain names from Complainant’s mark. Complainant produces evidence to show that the terms “homepageâ€ and “dashboardâ€ are associated in some ways with the term “office.â€ The addition of the terms “homepageâ€ and “dashboardâ€ to the disputed domain names does not prevent the domain names from being confusingly similar to Complainant’s mark
Fortunately, the respondent MyBizHomepage, Inc. showed that it has rights and legitimate interests in mybizhomepage.com, which it has been operating for several years. It also proved that it didn’t register mybizdashboard.com in bad faith. MBO Partners lost the case.