National Arbitration Forum
StreetPrices.com, Inc. v. Nett Corp.
Claim Number: FA0908001280020
Complainant is StreetPrices.com, Inc. (â€œComplainantâ€), represented by Mitchell Chyette, of Leland, Parachini, Steinberg, Matzger & Melnick, LLP, California, USA. Respondent is Nett Corp (â€œRespondentâ€), represented by Ari Goldberger, of ESQwire.com Law Firm, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <streetprice.com>, registered with Moniker Online Services LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Calvin A. Hamilton (Chair), David H. Bernstein and The Honourable Neil Anthony Brown QC as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 20, 2009.
On August 19, 2009, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <streetprice.com> domain name is registered with Moniker Online Services LLC and that the Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNâ€™s Uniform Domain Name Dispute Resolution Policy (the â€œPolicyâ€).
On September 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the â€œCommencement Notificationâ€), setting a deadline of September 21, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentâ€™s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 13, 2009.
On October 21, 2009, pursuant to Respondentâ€™s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton (Chair), David H. Bernstein and Neil Anthony Brown as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
On November 6, 2009 Complainant applied to the Panel requesting leave to file a supplemental brief to Respondent´s Response. It is in the discretion of the Panel to allow or deny these types of requests. The Panel denies Complainant´s request on the ground that it is competent to analyze the relevance of the NAF and WIPO cases cited in Respondent´s submission. The Panel also feels that it has sufficient factual information necessary to decide this case on the merits.
1. Streetprice.com is identical or confusingly similar to streetprices.com.
Complainant is commercially known as <streetprices.com> and has been using the <streetprices.com> mark since November 1, 1997 when it launched its website <streetprices.com>, a shopping search engine used by consumers to compare electronic and household products. The <streetprices.com> trademark was registered by Complainant on the principal register of the U.S. Patent and Trademark Office (â€œUSPTOâ€) on December 9, 2008.
Complainant alleges that Respondentâ€™s <streetprice.com> website advertises household and electronic goods, but does not contain product information and directs users to websites other than the Complainant´s site. Complainant argues that â€œStreet Pricesâ€ is not an English word and that Respondent´s domain name, <streetprice.com> is confusingly similar to Complainantâ€™s mark because the only difference is that Respondent´s domain name is singular.
Complainant argues that Respondent´s domain name is nothing more than typo-squatting in that a typographical error by consumer could misdirect users into thinking they have reached Complainant´s website and thus be disappointed by the content. Complainant alleges this may cause consumers to use a different comparison shopping engine, thus damaging its <streetprices.com> mark.
2. Respondent has no rights/legitimate interests in Streetprice.com .
Complainant alleges that it has not given Respondent permission to use its mark and that Respondent has no rights or legitimate interest in <streetprice.com> because it has not registered the domain name as a mark. Furthermore, Complainant argues that Respondent is not using the domain name in connection with a bona fide offering of goods and services or other legitimate non-commercial use. Complainant also argues that Respondent´s domain name is parked on a landing page containing only pay-per-click (PPC) advertising, thus earning Respondent PPC fees.
Complainant argues that Respondent´s domain name purports to advertise electronic devices when Respondent generally has no connection with electronics. This is evidence that Respondent is attempting to divert users from Complainant´s website.
Complainant alleges that the website to which the <streetprice.com> domain name resolves is just holding a place on the web and that Respondent is not trying through this website to engage in the selling of products.
Complainant further alleges that Respondent is engaging in trademark infringement by misdirecting potential consumers and earning money in the process. Complainant finally alleges that Respondent is not known as <streetprice.com>.
3. Streetprice.com was registered in bad faith.
Complainant contends that it has requested that Respondent stop using its mark but that it has not received any response, defense or explanation. Complainant believes that Respondent is intentionally trying to attract internet users to its website for commercial gain by creating a likelihood of confusion.
Complainant argues that Respondent registered its domain name on December 4, 1998, a year after Complainant began using its own website, and that the â€œstrikingly similarâ€ and â€œfanciful natureâ€ of the term â€œstreet pricesâ€ makes it hard to avoid the conclusion that Respondent is attempting to interfere with Complainant´s business.
Complainant also alleges that Respondent cannot reasonably assert that it merely â€œstumbledâ€ upon the term â€œstreet priceâ€ given that it is not an English word and that a mere search engine search of said term would have revealed Complainant´s website as the first item listed. Furthermore, when approached by Complainant, Respondent offered to sell the domain name for US$100,000. Complainant argues that this is evidence that Respondent purchased the domain name with the intent of selling the domain name to Complainant. Respondent´s out of pocket costs for the domain name are estimated at about $8.00/year.
1. Streetprice.com is NOT identical or confusingly similar to streetprices.com.
Respondent argues that its domain name is not confusingly similar to Complainant´s mark because â€œStreet Priceâ€ is a descriptive term and therefore the use of a minor difference, here the exclusion of an â€œsâ€, is sufficient to eliminate the finding of confusing similarity. Respondent also points to the fact that the USPTO found Complainant´s mark â€œStreet Priceâ€ to be descriptive. Respondent cites a letter from the USPTO to Complainant where it is indicated that the trademark registration applies to the combination of word and design.
2. Respondent has rights/legitimate interests in Streetprice.com.
Respondent alleges that is has a legitimate interest and rights in the disputed domain name and that it registered <streetprice.com> over ten years ago and in good faith based on its descriptive meaning and without knowledge of Complainant´s trademark. Respondent argues that the Panel must find for Respondent on this issue if it can find no evidence that Respondent registered the disputed domain name without the intent to target Complainant´s mark.
Respondent argues that it registered the domain name based on its descriptive nature and that this is corroborated by Respondent´s numerous other descriptive and common word domain names such as <bigsavings.com>, <economysites.com>, <cheaplaptops.com> and many others such as <snoring.com>, <strength.com>, and <sweating.com>.
Respondent argues that there is no evidence supporting an inference that Respondent registered the domain name because it incorporates Complainant´s mark or that Respondent registered the domain name with Complainant´s mark in mind.
Respondent further argues that receiving a share of revenues for PPC fees is a legitimate interest.
Respondent also claims that its domain name ads are auto generated by Yahoo! and that its website historically contains a wide range of services and goods, not only electronics.
3. Streetprice.com was NOT registered in bad faith.
Respondent claims that there is no evidence of bad faith registration since it registered the domain name when its previous registration lapsed and that this negates a finding of bad faith because â€œthe expiration of a domain name can be interpreted as a signal that any trademark claim to the domain name was abandoned and that the domain name could be registered in good faith.â€
Respondent argues that it is not attempting to compete with or disrupt Complainantâ€™s business. Furthermore, Respondent argues that, absent direct proof, there can be no finding of bad faith registration when a descriptive term domain name is at issue.
Respondent also argues that Complainant´s failure to timely bring an action indicates that Complainant does not believe the domain name was registered in bad faith.
Respondent also denies any allegations that it offered to sell the disputed domain name for US$100,000.
Finally, Respondent states that Complainant has abused the ICANN policy by bringing this claim, and Respondent thus requests a finding of reverse domain name hijacking (â€œRDNHâ€).
DISCUSSION & FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the â€œRulesâ€) instructs this Panel to â€œdecide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.â€
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Pursuant to ICANN policy the Panel must meet a two prong analysis. First, the Panel must find that Complainant has sufficiently demonstrated rights in a mark. Secondly, Complainant must show that the disputed domain name is confusingly similar to the mark in which it has rights. See Brown v. Julie Brown Club, D2000-1628 (WIPO Feb. 13, 2001); Celine Dion & Sony Music Entmâ€™t Canada, Inc v. Jeff Burger, D2000-1838 (WIPO Feb. 13, 2001).
Here, Complainant has been using the â€œstreet pricesâ€ mark in connection with a website offering discounted consumer electronics since November 1, 1997. Complainant submits evidence of registration of the <streetprices.com> with the USPTO (Reg. No. 3,542,387 issued Dec. 9, 2008). This trademark registration lists the date of first use as November 1, 1997.
Respondent nevertheless argues that the term â€œstreet pricesâ€ is descriptive and submits evidence that an internet search for the term â€œstreet priceâ€ reveals 945, 000 results. As further evidence Respondent notes that the USPTO registered Complainant´s trademark on the supplemental register and required Complainant to disclaim â€œstreet pricesâ€ from its design mark.
Although it is true that the USPTO initially placed Complainant´s mark on the supplemental register and did require Complainant to disclaim â€œstreet pricesâ€ from its design mark when it first applied to register those marks in 2000, a review of Complainant´s registrations on the publicly-available database on the USPTOâ€™s website reveals that the USPTO subsequently registered Complainant´s mark on the principal register after Complainant made a showing of required distinctiveness under Section 2(f) of the Lanham Act. Therefore, Complainant does own a valid registered trademark of <streetprices.com>.
Where complainant demonstrates that it owns a registered trademark, and in absence of compelling evidence from Respondent that the registration is invalid, Complainant has satisfied the prerequisite of having trademark rights. Thus, this Panel finds that Complainant has trademark rights in <streetprices.com>.
Complainant argues that the disputed domain name is confusingly similar to its own <streetprices.com> since the only difference is that the disputed domain name changes a plural to singular removing the letter â€œsâ€ found at the end of the mark.
In response, Respondent contends that the <streetprice.com> domain name is comprised of common, descriptive terms and as such cannot be found to be identical to Complainantâ€™s mark. This Panel finds that such determination is not necessary under the Policy and turns to whether or not the disputed domain name is confusingly similar. See Tammy Upwall and Michael Upwall d/b/a Got Beauty v. Kam Yaghobian d/b/a Got beauty products, FA 1122960 (Nat. Arb. Forum Feb. 21, 2008) (â€œRespondent contends that the <gotbeautyproducts.com> domain name is comprised of generic terms, and that Complainant is not exclusively associated with the GOT BEAUTY mark. Therefore, Respondent alleges that the <gotbeautyproducts.com> domain name is not confusingly similar to Complainantâ€™s mark. The Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) since this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainantâ€™s mark.â€).
Complainant has demonstrated that it owns the trademark <streetprices.com>. The incorporation of a trademark in its entirety in a respondentâ€™s domain name is sufficient to establish that a domain name is identical or confusingly similar See Quixtar Investments, Inc v. Dennis Hoffman, D2000-0253 (WIPO May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The disputed domain name contains the singular version of Complainant´s trademark. Thus, the only difference between the disputed domain name and Complainant´s mark is the exclusion of the letter â€œsâ€. This minor deviation is not a sufficient deviation from Complainant´s mark to render the domain name dissimilar from the trademark. Indeed, some consumers could easily mistakenly type the disputed domain name instead of Complainant´s mark and reach Respondent´s site via mere typographical error. This Panel therefore finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Rights or Legitimate Interests
It is generally accepted that the obligation is on Complainant to establish a prima facie case under Policy ¶ 4(a)(ii) that the Respondent has no right or legitimate interest in the domain name and that, when that prima facie case is established, the burden of production shifts to Respondent to rebut it by producing evidence that it does have such a right or legitimate interest. Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is â€œuniquely within the knowledge and control of the respondentâ€).
In the present case, Complainant has established a prima facie case by virtue of its â€œstreet pricesâ€ trademark and the evidence it has submitted with respect to advertisements on the website to which the disputed domain name resolves. Respondent must then come forward with evidence to rebut Complainant´s prima facie case.
In the present case, Respondent seeks to achieve that by advancing two arguments. The first argument is that it has acquired a right or legitimate interest in the domain name because it consists of a wholly descriptive term and the evidence shows that the domain name was not registered with Complainantâ€™s trademark in mind. The second argument is that it has been using the disputed domain name in connection with a bona fide offering of services.
As to the first argument, it is now clear that there are decided UDRP cases that support that submission, namely, the two decisions cited by Respondent, Canadadrugs.com et al v. ASM Bioventure, No.568743 (Nat. Arb. Forum Nov. 29, 2005) and Baccus Gate Corp. et al,. v. CKV et al., D2008-0321(WIPO May 20, 2008), and others such as Kaleidoscope Imaging, Inc. v. V Entmâ€™t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was â€œgenericâ€ and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes). If, though, the domain name is registered to take advantage of a trademark, and is used in an infringing manner to offer competitive good or services, that would not constitute a legitimate interest. No Zebra Network Ltda v. Baixaki.com, Inc., D2009-1071 (WIPO Oct. 26, 2009).
Applying these principles to the facts of the present case, it must be equally clear that the expression â€œstreet priceâ€ is descriptive because it describes, in a highly graphic manner, the price that one could expect to pay for goods on the street or in an open market, and therefore perhaps lower than in department stores or as advertised.
Respondent also submits evidence that a terms search on the Google search engine for â€œstreet priceâ€ yielded 945,000 third-party results and that the meaning of the phrase â€œstreet priceâ€ is â€œthe average or usual price charged for a product, especially one that is rarely sold at the Manufacturerâ€™s Suggested Retail Price.â€
Against this, Complainant says that the expression is not a word at all, which is literally correct, because it is two words, but the principle is the same, for it is the combination of the two words that creates the generic expression, especially in the context of domain names were it is common to disregard spaces and run words together.
It should also be said here that part of Complainantâ€™s case is that its trademark has already acquired secondary meaning and that is how it comes to have the registration of the mark that it does. Indeed, an examination of the papers in the USPTO that are on the public record shows the substantial case that secondary meaning had been acquired by Complainant that it submitted to the USPTO to reverse the Trademark Examinerâ€™s initial refusal to register the trademark on the principal register.
However, that is not the question here, for there is no evidence that Respondent knew of Complainantâ€™s activities that gave secondary meaning to the trademark and, in any event, the question is about whether the domain name is descriptive, which it is, not the nature of the trademark. Clearly, the structure of paragraph 4 of the Policy is that paragraph 4(a)(i) deals with the standing of the Complainant to bring the Complaint, which is shown if and when it proves that it has rights in a trademark. But paragraph 4(a)(ii) shifts the attention to the respondent and asks if it has a right or legitimate interest in the domain name. A Panel is then at large to examine whether there are any circumstances showing that the Respondent has such a right or legitimate interest. See FilmNet Inc. v. Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that Complainant failed to establish that Respondent did not have rights or legitimate interests in the <filmnet.com> domain name where the disputed domain name was wholly comprised of generic words, even though Complainant was the owner of the registered FILMNET mark) and also Rollerblade, Inc. v. CBNO & Ray Redican Jr., D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration” (emphasis added)).
Moreover, Respondentâ€™s case is that it also registered other domain names consisting of similar descriptive expressions such as <bigsavings.com>, a practice noted as the modus operandi of respondent in Sweeps Vacuum & Repair Center, Inc v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001) and as â€œusing the domain name not in the trademark sense, but in the descriptive sense, describing the types of businesses (sweepstakes related) listed on the directory page. This Respondent is entitled to do.â€ Id.
All of these factors tend to support the conclusion that the terms of the domain name are descriptive, giving the Respondent a legitimate interest in the domain name so long as the goods and services offered on the website are directly related to that descriptive meaning.
Respondent, however, has an additional element to show, namely, that in registering the domain name, it was not doing so because of Complainantâ€™s trademark or, as it is often put, that it was not targeting Complainant. In the present case, the Respondentâ€™s only direct evidence is of the companyâ€™s President, who stated that he did not register the domain name with Complainantâ€™s trademark in mind. Indeed, that claim seems more likely than not to be true, for the statement shows that Respondent had access to and registered many such descriptive expressions and it is apparent that Respondent registers such domain names as part of its business and for the reason that they are descriptive. Moreover, at the time when Respondent registered this domain name, Complainantâ€™s website was in operation for only one year, there has been no showing of whether that website had achieved commercial success and/or was generally known, and Complainant certainly has not shown that it had any trademark rights at that time; to the contrary, that Complainant assented to the registration of its trademark on the supplemental register in 2001 suggests that Complainant was unable to show trademark rights at that time, let alone three years earlier, in 1998, when the domain name was registered by Respondent.
However, Complainant also says that it can be inferred that it was targeted because Respondent has not used the domain name to advertise goods within the entire ambit of the domain name, which it could have done, but only the electronics that Complainant itself sells. But Respondent has shown by evidence that, in 2000, 2004, 2005, 2006 and 2007, its website was in fact used for promoting a very wide selection of goods and services that have street prices and that therefore come within the generic expression in the domain name.
On the evidence, Respondent has therefore shown that its domain name consists of a wholly descriptive expression that it has been used to promote goods and services coming within that description and that the domain name was not registered to target Complainant or its trademark.
With respect to Respondent´s second argument, that it has been using the disputed domain name in connection with a bona fide offering of services since it acquired the <streetprice.com> domain name in 1998 and that this gives it a right or legitimate interest in the domain name by virtue of Policy ¶ 4(c)(i), in view of the matters already addressed, the conclusion must be that the use of the domain name by Respondent constitutes such a bona fide use. That conclusion is consistent with prior UDRP decisions, See McMullen Argus Publâ€™g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007) (holding that â€œpay-per-click websites are not in and of themselves unlawful or illegitimateâ€); see also Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondentâ€™s use of the disputed domain name, which was comprised of generic terms, as a portal to a commercial website featuring various advertisements and links, constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)), as well as the many decisions cited by Respondent.
Complainantâ€™s evidence is that it made its claim on Respondent by a cease and desist letter dated January 23, 2009 and, by implication, the receipt of that letter was, on the evidence, the first notice given to Respondent of the dispute. That being so, and the use of the domain name being a bona fide offering of goods and services, and in the absence of any evidence that the use was infringing or otherwise was conducted in a way to target Complainant or take advantage of its trademark rights, it was an offering of goods and services that had been underway for several years before Respondent received notice of the dispute and the matter therefore falls squarely within Policy ¶ 4(c)(i). This also gives Respondent a right or legitimate interest in the domain name.
As a result, Respondent is able to and has established a rights and legitimate interest in the disputed domain name.
Registration and Use in Bad Faith
Since Complainant has not satisfied Policy ¶ 4(a)(ii), a further analysis of this element of the Policy is not required. See Creative Curb v. Edgetec Intâ€™l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that, because the complainant must prove all three elements under the Policy, the complainantâ€™s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondentâ€™s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)). However, this Panel will comment briefly as to its findings on this element given Respondentâ€™s request for a finding of RDNH.
Previous cases have held that bad faith use or registration can be inferred from the totality of the circumstances surrounding registration and use of a domain name. See XM Satellite Radio Inc v. Michael Bakker, FA 861120 (Nat. Arb. Forum Feb. 27, 2007); Twentieth Century Fox Film Corp. v. David A. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000); Denver Newspaper Agency v. Jobing.com LLC, FA 1282148 (Nat. Arb. Forum Oct. 16, 2009). In the present case, Respondent registered the disputed domain name on December 4, 1998, about one year after Complainant began using its mark. At this point in time, as noted above, Complainant´s mark was not registered by the USPTO (even on the supplemental register) and was likely a merely descriptive term. Respondent registered the disputed domain name with the intent to profit from the descriptive nature of the terms by generating revenue from PPC ads related to shopping at discounted â€œstreet priceâ€ prices. The record provided supports that Respondent has consistently continued this use since the time of registration. Since there is no evidence that Respondent attempted to take advantage of Complainant´s goodwill in the â€œstreet pricesâ€ trademark, this Panel also finds that Respondent has not registered and used the disputed domain name in bad faith.
Reverse Domain Name Hijacking
Respondent asserts a claim against Complainant for RDNH. Respondent relies on essentially two arguments. First, Respondent claims that the Complaint is without merit. Second, Respondent states that the Complainant knew or should have know it could not prove the essential elements under the Policy, thus asserting that Complainant acted in bad faith. Although the Panel is not insensitive to such claims, it finds that such a result is not warranted on this record. Complainant may not have had a winning Complaint, but it did own a trademark registration for <streetprices.com>, the question of legitimate interest was a close one, and the Complainant may have suspected that the domain name was being used in bad faith. See Britannia Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001). As can be seen from the substantive sections of the decision dealing with rights and legitimate interests and bad faith, the case gave rise to some highly contentious issues which the Complainant was entitled to have argued out, albeit unsuccessfully. Accordingly, the Panel declines to enter a finding of RDNH.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Calvin A. Hamilton (Chair), David H. Bernstein, The Honourable Neil Anthony Brown QC as Panelists.
Dated: November10, 2009
National Arbitration Forum
Separate opinion of the honourable Neil Anthony brown concerning confusing similarity.
Panellist Brown respectfully disagrees with this conclusion and would find that the domain name is not confusingly similar to the trademark in question. That is so because although, as the majority points out, the trademark was eventually accepted as having acquired secondary meaning for the purposes of registration, the Panel still has to decide in the words of the Policy whether the domain name is confusingly similar to the registered trademark by comparing both expressions. The fact of registration cannot negate that requirement in the Policy. Indeed, in the United States case Entrepreneur Media , Inc v. Smith, 279 F.3d 1135, 1147 ( 9th Cir.2002), quoted in Tire Discounters, Inc v. TireDiscounter.com No.679485 ( NAF June 14, 2006), cited by Respondent , made exactly that point in a different context but apparently faced with similar evidence. It said, or at least may be paraphrased as having said (at www.finegan.com/EntrepreneurMediaIncvSmith) : â€œAlthough plaintiff’s mark was the subject of an incontestable federal registration, the mark was nonetheless inherently weak, and there were many third-party uses of ENTREPRENEUR in magazine names, business names, and domain names.â€
That being so, the question is whether the domain name <streetprice.com> is confusingly similar to the STREETPRICES.COM trademark which describes in the most general way the street or discounted prices of undefined objects but, presumably, of goods and services in general. It is, of course, tempting to conclude that the mere omission of the letter â€œsâ€ in the domain name generates a confusing similarity. But, as was pointed out in Tire Discounters, Inc. v. TireDiscounters.com (supra), where the domain name <tirediscounter.com> was held not to be confusingly similar to the trademark TIRE DISCOUNTERS, it was the absence of the â€œsâ€ that made the difference, for, as the three person panel said: â€œThe omission of the letter â€œsâ€ from the mark is one of those small differences that matters in this contextâ€. It matters because the trademark itself is of a very generalized nature and the difference in spelling in the domain name suggests that the domain name may well be dealing with a different subject than the trademark.
Thus it cannot be assumed, on the balance of probabilities, that the internet user, considering both expressions, would conclude that the street price invoked by the domain name was related to the street prices invoked by the trademark. Indeed, the internet user who thought about it at all may well conclude that the domain name was referring to the street price of different objects and certainly a different offering of street prices from those covered by the trademark.
The domain name is therefore not confusingly similar to the trademark.