Complainants whose trademarks are composed of a design or a design-plus-words for which they have disclaimed the textural component have a particularly difficult burden in persuading the Panel that the domain name is identical or confusingly similar to its trademark. The burden may be satisfied on proof of other factors such as a common law right to words or phonetic elements mimicked in the domain name antedating the design mark. This was in issue in an early case, Savino Del Bene Inc. v. Graziano Innocenti Gennari, D2000‑1133 (WIPO December 12, 2000). Savino Del Bene possessed a trademark registration its acronym SDB in a three-dimensional box, but had no registration for SAVINO DEL BENE. However, the proof in that case established that the Complainant had a common law trademark in the name and, thus, the domain name <savinodelbene.com> was identical to its common law trademark and ordered transferred.
The difficulty with a design or design-plus words registration is that it is unlikely that a domain name composed of a string of phonemes can be confusingly similar with it and identity is out of the question entirely. Letters or words incorporated into the design only constitute part of the mark; they are not the mark itself. It is even harder to prove confusing similarity when the respondent in applying for its trademark has disclaimed the stylized words of the design. The Complainant’s burden is to persuade the Panel that the hypothetical Internet user will be confused into believing that the Respondent is the Complainant.
In Game X Change, Inc. v. Modern Empire Internet Ltd. c/o Administrator, FA0803001155839 (Nat. Arb. Forum May 6, 2008) (<gamexchange.com>), the complainant suffered under two disabilities in arguing its case. Although it initially possessed a trademark registration, it subsequently abandoned it or let it lapse; and, second, in its new application to recapture the lost trademark it disclaimed the words GAME EXCHANGE “apart from the mark as shown.” The Panel held that the “disclaimer eliminated any special common law trademark rights Complainant may ever have had to “GAME EXCHANGE,” citing VideoCall Co. v. M Koenig, FA 167922 (Nat. Arb. Forum Aug. 20, 2003) and it “also eliminated any special common law trademark rights Complainant may ever have had to phonetic and telescoped equivalents such as ‘GAME X CHANGE’.” The Panel explained that
in cases in which the device of figurative element is an integral element of the trademark’s distinctiveness, domain names identical or confusingly similar to the textual components of the mark have been found to be not identical or confusingly similar to the mark.
Apart from the common law right whose proof is under the complainant’s control, one of a complainant’s few other options is to prove that the respondent acquired the domain name specifically for the purpose of taking advantage of the complainant’s reputation in the market place. This is not an easy task, because although targeting is prima facie proof of bad faith use, it requires proving also that the respondent had the requisite level of knowledge of the complainant or its trademark at the time it acquired the domain name. It can be strongly inferred that registration of a domain name identical to the Complainant’s mark, as was the case in Savino Del Bene, means that the Respondent had actual knowledge of the Complainant.