The National Arbitration Forum last week denied a complaint brought by the motorcycle parts/accessories company REVZILLA that had brought a complaint against its competitor POWERSPORTS LLC (via alleged alias) for their registration and use of the domain name www.partzilla.com. The case was decided solely on the “similarity” issue where the panel reasoned, very thoughtfully, that the REVZILLA name/mark was simply not close enough to PARTZILLA, and that the similarity of a common suffix between the mark and domain was not enough to carry the day.
Specifically, the panel noted the following:
“[t]he Panel believes it is not unreasonable to hold that there is no confusing similarity where, as in this case, the two names have a suffix in common and one moreover that is also a dictionary word, but no similarity between their prefixes. There needs to be much more similarity between the prefixes than there is between REV- and PART for there to be a finding of overall confusing similarity. That is because, in the final analysis, the meaning of Paragraph 4(a)(i) of the Policy is that a Panel must decide if there is, at the time of the Complaint, confusing similarity between the disputed domain name and Complainant’s trademark, i.e. making a straight comparison between the two without having regard to any extraneous factors that are, for the purposes of this paragraph, irrelevant.” (emphasis added)
Lastly, the respondent argued persuasively that a UDRP was not the proper forum for the case because the issue was essentially a trademark infringement issue concerning facts such as “actual confusion”, registration status, and evidentiary issues...