Domain Name Containing Trademark Translation is Determined Confusingly Similar

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Domain Name Containing Trademark Translation is Determined Confusingly Similar

	By Cedric Manara Law Professor
	January 17, 2006 Views: 25,139 Comments: 5

Interesting WIPO case (D2005-1085): Complainant (Saint-Exupery estate) owns “Le Petit Prince” in EU, US, and other countries. The translation of “Le Petit Prince” is “The little prince”. Respondent registered ‘thelittleprince.com’. Is such a domain name confusingly similar to the trademark? Yes said the panel:

“The disputed domain names [sic] do not incorporate Complainant’s mark “Le Petit Prince” but the English translation of Complainant’s trademark “The Little Prince”. The Panel thus finds that there is no phonetic similarity between the disputed domain name and Complainant’s trademark.

However a semantic similarity between a trademark and a domain name can also exist if the trademark and the domain name contain word elements of different languages if a considerable part of the public understands the meaning of the translation. See e.g. Compagnie Generale Des Etablissements Michelin - Michelin & Cie. v. Graeme Foster, WIPO Case No. D2004-0279. The Panel observes that Complainant’s registered trademark is identical with the English translation of Complainant’s trademark and title “Le Petit Prince” and that the English title “The Little Prince” of Saint Exupéry’s novel is well known in the English speaking world.”

By Cedric Manara, Law Professor

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Comments

Jothan Frakes – Jan 18, 2006 11:44 PM

Does this set precedence for more loose interpretation of ‘confusingly similar’?

This seems noteworthy in that it could have bearing on IDN or other typographical variant registrations that seem quite common.

# 1 Reply | Link | Report Problems

Robert Lee Claypool – Jan 20, 2006 2:35 AM

But aren’t trademarks goods and services dependent.
http://www.uspto.gov/web…

Such that as long as the website isn’t promoting the good that the trademark covers, it should be alright?

# 2 Reply | Link | Report Problems

shenyang – Jan 24, 2006 2:53 PM

Dear Vint Cerf,may you tell us what time can use IDN with gTLD?
as in P.R.China users must buy between ccTLD(e.g,www.Chiinese.cn IDN) & gTLD(e.g http://www.Chinese.com IDN)? but a few can use with our computer’s IE.

# 3 Reply | Link | Report Problems

JFC Morfin – Feb 1, 2006 8:45 PM

Dear Shenyang,
may be will you want to use Chinese names; using Chinese TLD? You can find them as well as Chinese keyword on the CNNIC site. You will note that you can use Chinese private aliases off the shelf in using Firefox.

# 4 Reply | Link | Report Problems

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