This article was first published in the World Trademark Review magazine on 18th March 2021
Renowned real estate property portal Rightmove has recovered the domain name ‘righttrade.uk’ through the ‘.uk’ registry Nominet's domain dispute resolution procedure, after successfully proving that the registrant used the domain to host a commercial website passing off as Rightmove.
Nominet provides its dispute resolution service (DRS) to efficiently resolve cybersquatting cases. The DRS is one of few domain name policies that has a built-in appeal process. Rightmove used this procedure to overturn a previous decision, which had found that a comparison of the terms ‘rightmove’ and ‘righttrade’ bared no similarity.
Instead, the appeal panel found that there was evidently some similarity between the two terms. Coupled with indisputable evidence of abusiveness by the registrant, the panel granted Rightmove’s request to transfer the domain.
The first element of the DRS – as with many of its dispute policy counterparts for generic or country-code domains – asks whether there is sufficient similarity between a domain name and a mark.
There are several interesting questions on the threshold for similarity under the DRS. The Righttrade decision is important for trademark owners tackling domain names that deceive users and harm brand reputation.
Rightmove is a leading online portal for searching real estate properties, particularly in the United Kingdom. The respondent created a website, which:
Rightmove’s fraud team quickly found out about the respondent’s website after complaints were filed by users believing it to be affiliated with the reputable brand.
The respondent had previously used ‘rightmove.trade’ but transferred the website to a new domain – ‘righttrade.uk’ – to evade legal action. It is clear that the respondent picked this domain to maintain sufficient nexus with Rightmove, further deceiving users as to its affiliation with the company. However, crucially, the new domain did not replicate the trademark identically.
Nominet’s appeal panel found that the terms were similar under the DRS. The DRS, unlike the UDRP, does not require confusing similarity. Instead, once the similarity threshold has been met, the merits of the case are considered under the second element of abusive registration.
The appeal panel took a straightforward approach to assessing the similarity between RIGHTMOVE and RIGHTTRADE. The starting point was to establish the meaning of the word ‘similar’, which is “[to have a] resemblance in appearance, character, or quantity, without being identical”.
Following on from this definition, the panel listed the following relevant factors in the case:
Thus, a base level of lexical similarity was established between the two terms. The Experts Overview, a document compiling decisions relating to key issues under the DRS,states that the assessment of similarity is of a “relatively low-level test”, which simply looks at proving whether a complainant has “a bona fide basis for making the complaint”.
DRS experts have followed this principle, not least in the EBUYGUMM case (DRS No 21406), upon which the complainant relied. The expert in that case found a “low degree of similarity… rather than no similarity at all” between the trademarks EBAY and GUMTREE and the domain name comprising EBUYGUMM. This case was eventually denied, but due to a lack of abusiveness, rather than lack of similarity.
On that basis, the Righttrade complaint passed the first element, proceeding to the second element of abusive registration. As described above, there was no issue in attributing abusiveness to the respondent’s actions.
The appeal panel’s objective approach of using established DRS jurisprudence as a guide will help trademark owners going forward. The test for similarity exists but has a relatively low bar.
Issues of confusion, the strength of a complainant’s trademark and a respondent’s actions are all considered under the second element.
The original decision on ‘righttrade.uk’ introduced outside factors under the first element. The expert deciding the initial case considered that other UK-based companies used the term ‘right’ in their names. Given that there were many such companies, the expert ruled that the ‘right’ prefix should be disregarded, reducing the comparison to ‘move’ and ‘trade’.
The appeal panel disagreed, stating that: “The term ‘right’ may well be used by many traders as a prefix but that does not mean it should be ignored in assessing the first element. The test is in the opinion of the Panel, whether ‘rightmove’ and ‘righttrade’ are similar.”
The initial expert did not consider the substantial renown that RIGHTMOVE enjoys in the United Kingdom, nor the respondent’s own intentions to make the domain name similar enough to the trademark to cause confusion. From the appeal panel’s decision, it appears that all outside factors should be given little credence under the first element. Instead, it is a simple test to assess whether there is some nexus between the trademark and the domain name.
Cybersquatting occurs beyond identical replications and mere typos. When a ‘.uk’ domain registrant intends to cause confusion with another brand, but goes about it in a clever way, it will not fall outside the remit of the DRS.
This case will likely become a reference point for determining similarity under the DRS and for issues relating to generic prefixes in trademarks.