Domain Name Containing Trademark Translation is Determined Confusingly Similar

[mandy]

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:

full article: http://www.circleid.com/posts/domain_nam...anslation/

WIPO case (D2005-1085) decision:

5. Parties’ Contentions

A. Complainant

Complainant submits that (1) the domain name is identical to the Complainant’s mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.

In reference to the element in paragraph 4(a)(i) of the Policy Complainant asserts that the domain name is confusingly similar to the Complainant’s mark as “The Little Prince” is a literal translation of the mark “Le Petit Prince”.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant argues that the Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized by the Complainant to use the Complainant’s marks or to use the English title of Antoine de Saint Exupéry’s famous novel which is still protected by copyright law.

In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that the title “The Little Prince” has been widely used throughout the world and is particularly well-known in the United States. Complainant therefore contends that Respondent was aware of or had constructive notice of the Respondent’s rights in the famous title “The Little Prince” at the time it registered the domain name.

Complainant concedes that Respondent has not used the domain name for an active website and argues that passive holding of a domain name equates with active use of a domain name...

full text of WIPO case (D2005-1085) decision: http://arbiter.wipo.int/domains/decision...-1085.html