Trademark law recognizes (with some qualification) that two parties can be entitled to use similar, even identical lexical strings where the concurrent user offers the public unrelated goods or services. It has been noted that “the Lanham Act's tolerance for similarity between competing marks varies inversely with the fame of the prior mark.” Kenneth Parker Toys Inc .v. Rose Art Industries Inc., 963 F. 2d 350, 353 (Fed. Cir. 1992). That is, “[a]s a mark's fame increases, the Act's tolerance for similarities between competing marks falls.” This principle is carried over into UDRP jurisprudence. In and of itself, a domain name identical or confusingly similar to a trademark is not remarkable.
Owners whose trademarks consist of lexical strings attractive to many users have limited protection, hence the allowance for “similarities between competing marks.” Current, multiple registrations of the same or similar lexical string in different classes undercut a complainant’s allegation that in registering the disputed domain name the respondent is targeting it trademark. Example: “Country Home,” Meredith Corp. vs. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (“[T]here are at least seven United States trademark registrations for Country Home by others for diverse uses and ‘hundreds’ for common variations thereof, e.g., Home Country. Furthermore, Complainant's trademark registrations are in classes 16 and 31 for such things as printed materials, magazines and seed. On the other hand, Respondent's potential use in connection with real estate and mortgage services would be in International Classes 35 and 36.”). No bad faith is imputed for registering a domain name respondent uses to describe the goods or services it offers. Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) ().
The principle is illustrated in Park ‘N Fly Service Corporation v. Elias Tesfa, FA1202001427761 (Nat. Arb. Forum March 15, 2012). Arguing that a respondent is a competitor – suggesting thereby that it should have had knowledge or been aware of complainant – necessarily requires a threshold analysis of the parties’ business locations and their goods or services. Propinquity strengthens or undercuts a contention of illegitimacy for registering the domain name. In Park ‘N Fly, the parties are located on opposite sides of the United States.
The Respondent prevailed even though it did not appear because the Complainant’s evidence included screenshots that demonstrated what the Respondent would otherwise have presented in its own defense. According to the screenshots,
Respondent’s <ezparkfly.com> domain name resolves to a website that offers competing parking and transportation services under the title “EZ Park Fly” in San Jose, California. Complainant asserts that Respondent directly competes with Complainant’s business. The Panel determines that the terms “park” and “fly” are descriptive terms that describe both Complainant’s and Respondent’s businesses.
A trademark holder does “not have an exclusive monopoly” on common lexical strings (here, “park” and “fly”) in relation to the services to which the terms ordinarily apply. The Panel found that “in relation to airport parking services, and Respondent operates a legitimate business.” The risk in registering a common lexical string is that others, without knowledge of that a string has been registered as a trademark, can choose it for its own business, the only qualification being that the choice is legitimate.
