Even if the domain owner is doing a bad thing, UDRP can only be used if all three prongs of the policy are met.
The Uniform Domain Name Dispute Resolution Policy (UDRP) is a good tool to take over cybersquatted domain names. These names are often being used for nefarious purposes such as phishing or selling counterfeit goods.
One such case involving counterfeit goods that was just decided by National Arbitration Forum shows the limits of using UDRP to take down a site: you still have to prove that the domain is cybersquatting under the three prongs of UDRP.
The case was filed by Australian clothier Zimmermann Wear Pty Ltd against ZimOutlet(.)com. There’s no question that the domain owner is up to no good. The site is made to look like the clothing company and is allegedly shipping counterfeit goods when someone orders.
The problem is that Zimmermann and Zim aren’t that similar. Panelist David E. Sorkin did a good job comparing this case to others in which only part of the trademark was used in the domain:
Although Complainant has not offered any authority on this issue, the Panel has considered various decisions under the Policy involving domain names that incorporate the first few letters of a longer mark. In Fuji Photo Film U.S.A., Inc. v. Center for Ban on Drugs, D2004-0970 (WIPO Feb. 25, 2005), the Panel found fujfilm.com to be confusingly similar to FUJI, on the grounds that it combined the first three letters of the four-letter mark—”essentially the entirety of Complainant’s mark”—with a generic term for the complainant’s principal product. Similarly, in Chevron Intellectual Property LLC v. Linda Hearn, FA 1409285 (Forum Nov. 15, 2011), the Panel found chevoil.com to be confusingly similar to CHEVRON, combining the first four letters of the mark with a term descriptive of the complainant’s products and services. In Tesco Stores Ltd. v. Mat Feakins, DCO2013-0017 (WIPO Oct. 4, 2013), the Panel found tes.co to be confusingly similar to TESCO, even though the second-level component of the domain name corresponded to only the first three letters of the mark, on the grounds that the domain name taken in its entirety was identical to the complete mark but for the intervening dot.
Confusing similarity is particularly likely to be found where a mark is commonly referred to by its first syllable, and of course where the complainant also possesses trademark rights in the truncated form of the mark. See, e.g., Supercell Oy v. WhoisProxy.com Ltd / Jordan Rash, Application Automation LLC, D2015-1445 (finding clashbot.org confusingly similar to CLASH OF CLANS, based upon evidence that the mark is often abbreviated to “CLASH”); Caterpillar Inc. v. Jonathan Scandreth, FA 1348137 (Forum Nov. 8, 2010) (finding cataxles.com and other domain names confusingly similar to CAT and CATERPILLAR, based upon registered trademark rights in both forms of the mark); Anheuser-Busch Inc v. Dot Com Internet Solutions, D2001-0500 (WIPO June 13, 2001) (finding budcommercials.com and other domain names confusingly similar to BUD and BUDWEISER, based upon registered trademark rights in both forms of the mark).
The decisions cited above are all distinguishable from the present matter. The disputed domain name incorporates only three letters of a ten-letter trademark. While those letters correspond to the first syllable of the mark, it is not clear that they serve as the distinctive or dominant aspect of the mark. Complainant has not claimed that it has rights in ZIM or that its ZIMMERMANN mark is commonly referred to in this truncated manner. (Indeed, a cursory Google search for “zim” would likely lead one to conclude that these letters standing alone almost never refer to Complainant.) Nor does the generic term “outlet” that the domain name appends to these three letters bear any obvious connection to Complainant or its products; an “outlet” could be a discounter or retailer of virtually any sort of products.
It’s quite clear that the domain owner is doing a bad thing. Sometimes panelists make the wrong decision for the right reason, effectively trying to remedy a wrong using UDRP. But it’s important for panelists to apply the same standards across all cases. Kudos to Sorkin for his decision in this case.