Guaiky.com confusingly similar to Quirky.com says NAF Panelist Sandra Franklin
In a beasion zeused this noaning NAF baualist Sandra Franklin betamined that the pouin “Guaiky.com” is voanusimly ziamuar to “Quirky.com”.
Sorry… You didn’t have any trouble reading that did you?
In a decision released this morning NAF panelist Sandra Franklin determined that the domain “Guaiky.com” is confusingly similar to “Quirky.com.”
As you can see, no one reading “guaiky” would think of “quirky”. The first letter is different. The third letter doesn’t exist in the mark. And the consonant “r” that is in the mark is missing from the domain. The transformation of “guaiky” to “quirky” is similar to turning “right” into “wrong”, which Franklin also accomplished with her decision.
The “confusingly similar” test has long been a playground for Panelists’ more creative impulses. “MADDHATTEntertainment” was found confusingly similar to “MADD”. “Uniprotein” was found confusingly similar to “Universal”. And most notoriously, “Bodacious-tatas” was found confusingly similar to “tata”.
Franklin relies on the 13-year old belken.com decision that found “Belken” confusingly similar to “Belkin” as support for her finding that “Guaiky.com” is confusingly similar to “Quirky.com”. If a case that found that swapping one vowel in the fifth position for another vowel justifies a finding of consuming similarity that involves three transformations to a seven-letter word then nearly any fanciful mark could be used to go after thousands of dictionary word domains. Similar reasoning would find Disney confusingly similar to “Kidney.com” or would allow Verizon to go after “Derision.com”. Since consumers are so easily confused by swapping three-letters, much less one letter, what a nightmare it is to live in a world where ABC, BBC, and NBC are all television channels.
Franklin drew criticism for an earlier decision where she found eHelper.com to be a typo of edHelper.com, in ordering the transfer of that valuable non-distinctive domain.
Franklin is also the author of the “horrible” UDRP decision awarding the valuable, non-distinctive domain NiceCar.com owned by 13-years by a Korean to an American company with a trademark that post-dates the domain registration date by several years.
Franklin ordered the transfer of HealthySolutions.com despite a lack of evidence that when the domain owner registered the domain 13 years earlier that he was targeting the trademark holder. Franklin also ordered the transfer of the non-distinctive domain MedicalPark.com.
Franklin’s approach to the UDRP – finding “guaiky.com” confusingly similar to “quirky.com”, ignoring a domain owner’s legitimate interest in owning valuable non-distinctive domains such as eHelper.com, NiceCar.com, HealthySolutions.com or MedicalPark.com, finding that the reason a Korean individual registered and held for 13-years a domain, NiceCar.com, based on a commonly used generic phrase was in a bad faith effort to target a small American company’s unregistered usage of that phrase – makes a mockery of the UDRP policy. Her apparent goal is to find a way to transfer these domains regardless of the facts and she’ll twist the UDRP policy into unrecognizable shapes to achieve that goal.
Franklin has decided hundreds of cases as a sole panelist in the last few years, mostly for NAF but some as well at WIPO. A review of these cases show that if you appear before her with a complaint that isn’t formally deficient, with evidence that you had some trademark use, registered or unregistered, for your mark that predates the registration date of the domain, and the issue isn’t a pre-existing business or legal dispute, that you will win 100% of the time.
Put another way, in hundreds of cases over the last couple of years, when a Complainant can show some trademark use that predates the domain registration, Franklin has never found that the Respondent had a legitimate interest in its domain name. She has also never found, under this circumstance, that the domain owner’s registration or use was in good faith.
The integrity of the UDRP depends upon the integrity of the Panelists in honoring the policy as written. Franklin, and panelists who take a similar approach, are turning the UDRP into a tool for domain theft.
Updated Feb 9
So much caution needs to be taken with what are peoples livelyhoods in some cases
Thank you Nat for this post.
I don’t want to seem sexist but the well known women panelists are the worst: (Except only for Diane Cabell.)
Sandra Franklin
Carol Stoner (where if you have a trademark you will always win)
and of course my beloved *Gabriela Kennedy* that will not under any circumstances make a RDNH finding:
http://onlinedomain.com/2014/01/29/news/udrp-for-gooru-com-denied-but-no-rdnh-owner-declined-selling-domain-registered-13-years-before-trademark/
Check out this case where she also drove the Hon. Neil Brown QC crazy: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0075
Also check out this case where the complainant claimed that ayava.us is a misspell for avaya.com:
http://domains.adrforum.com/domains/decisions/1456063.htm
and their punishment:
http://domains.adrforum.com/domains/decisions/1487607.htm
And of course my disclaimer:
*UDRP Panelist Gabriela Kennedy is also working for a law firm and often submits UDRP complaints on behalf of her customers. Her fellow Panelists decide on her cases.*
Hi Konstantinos,
I don’t think it is fair to highlight the panelists who are women. Male panelists are equally capable of issuing problematic decisions.
Some of the most highly criticized decisions were issued by men, for instance-
Vanity.com – Nelson Diaz
Canary.com – Sebastian Hughes
Ovation.com – Eduardo Machado
OpenDental.com – Daniel Banks
Parvi.org – Andrew Christie
DKB.com – John Swinson
LomaLinda.net/.org – Richard Page (voted worst decision of 2009)
It is counter-productive to focus on the gender of the panelists. It obscures the bigger problem that certain panelists of both genders are issuing decisions that appear to disregard the requirements of the UDRP.
Nat,
it is personal because I have come up against all 3 women and none of the men you mention.
Anyway you missed the point of my post.
Thanks
Yet another “NO RDNH” ruling from Gabriela Kennedy.
The latest ruling by Gabriela Kennedy is the UDRP case for QIQ.com.
One of the requirements of the UDRP is that the complainant must prove that the domain name was registered in bad faith (paragraph 4(a)(iii) of the policy).
The complainant could never prove that the domain name was registered in bad faith by creating a likelihood of confusion with the complainant’s trade mark (as claimed by the complainant in their submission) very simply because the complainant’s trademark did not exist back in 1999.
Even Gabriela Kennedy herself, in her decision states: “As the Disputed Domain Name was registered on March 28, 1999, which was over a decade before the Complainant registered its QIQ trade mark, it is not possible for the Respondent to have been aware of the Complainant’s trade mark registration at the time of registering the disputed domain name and therefore could not have registered it in bad faith with the Complainant in mind.”
The complainant was represented by IP Service International Pty Ltd, Australia so presumably they understand the rules and the fundamental requirement to prove that the domain name had been registered in bad faith, yet despite knowing this, they proceeded to submit the UDRP case in an attempt to grab the long registered pre-existing domain name, so WHY NO RDNH ??????????????
Its both funny and worrying the way UDRP decisions are decided. And these decisions can only further encourage UDRP misuse. Even a little kid can see the difference b/w these words. Using just your common sense you can say that about panelists that there is certainly some sort of interest behind these decisions.
Bashar,
Thanks for your comment.
The UDRP should be implemented so that there is no appearance of bias. That you, and many others, see a lack of impartiality is a sign that there is something wrong.
Nat…
I liked your “Daffy Duck” personification.
That’s all folks!
🙂