Used as a marketing tool by economic operators, slogans are not only exploited in the real world but also in the digital world.
Protecting slogans over the Internet includes fighting against the use of third-party registered slogans in domain names. UDRP decisions show that assessing the likelihood of confusion in relation to slogans is similar to assessing such likelihood in relation to trademarks generally.
If a slogan has been registered as a trademark, the Panel will compare it with the domain name. On the other hand, if the slogan has not been registered as a trademark, then the existence of rights of a non-registered trademark (Common law rights) should be established. The applicant should establish an active use of the slogan, having created a link in the mind of the public between the slogan and its goods and services (D2005-0649 Ice House America, LLC v. Ice Igloo, Inc ; <icehouseamerica.com> and <icehouseamerica.net>). It should be established in concreto at the time of registration of the disputed domain name (D2002-1117 Arthur Guinness Son & Co. Limited, Guinness Anchor Berhad v. Josh.com.my a.k.a. Josh Lim ).
Sometimes domain names reproduce slogans in their entirety. Thus, the domain name <foreversport.com> was found to be similar to the slogan “FOREVER SPORT” by Adidas (D2000-1148 Adidas International B.V. v. Kadana Holdings Pty Ltd).
Domain names may also reproduce only part of the relevant trademark, which is also the slogan of the complainant. This has been the case for the domain name <morgandetoi.mobi> where the complainant was the holder of a complex trademark that included the slogan “Morgan de Toi” (D2012-2117, C.C.V. Beaumanoir v. Zhihao Zheng).
A likelihood of confusion may also be established where only part of the slogan is reproduced in the domain name, provided that the distinctive components of the slogan are used. Thus a shoe manufacturer holding the trademark “Think!” and using the slogan “Shoes by Think” successfully obtained the transfer of the domain name <think-shoes.net> (D2007-1007 Marko Schuhfabrik GmbH v. Mercom Group).
Domain names may also reproduce the slogan in a slightly different manner without excluding the risk of confusion. In the case concerning the domain name <thisisadamking.com>, the Panel found that the complainant had non-registered trademark rights on its slogan “Who is Adam King” and that the replacement of “Who” by “This” did not exclude the risk of confusion since, on the contrary, “This” could be viewed as an answer to the question asked by the slogan (D2002-1117 Arthur Guinness Son & Co. Limited , Guinness Anchor Berhad c/ Josh.com.my a.k.a. Josh Lim).
Domain names may also reproduce the slogan in combination with other terms. For instance, if a domain name reproduces the trademark of the complainant and adds it to its own slogan, the likelihood of confusion is even greater (D2010-2126, Akbank Turk A.S.c/. Axess Yeterbana <axessyeterbana.com> – trademark Axess + slogan “Yeter bana”).
However, where a domain name includes a slogan associated with a negative term, the likelihood of confusion does not necessary arise. The Panels’ opinions are divided with regards to domain names containing pejorative terms. Some refuse to recognize the existence of a likelihood of confusion in this case whilst others recognize it: it all depends on how one interprets the freedom of expression. Fighting against such domain names can therefore prove to be very difficult.
In this context, it is worth noting the decision regarding the domain names <mma-prejudice-moral-economique.com> and <mma-zero-tracas-publicite.com> rendered in favor of the insurer MMA in a way that was particularly favorable to rights holders (D2012-2136 MMA IARD c/ Eric François). The Panel noted a potentially confusing similarity on the grounds that, if had he found otherwise, this would “prevent right-owners from fighting many cases of cybersquatting”.
Finally, beyond the likelihood of confusion, the protection of slogans over the Internet also aims to prevent the exploitation of slogans by non-authorized third parties. It may include e.g. fighting against a misappropriation of the slogan on a third party’s website. The case D2004-0249 SEC SNC against Manakel Communication concerning the domain names <baton-de-berger.com> and <batondeberger.com> covered these two aspects. The domain names were identical to the complainant’s trademarks and were redirected to a pornographic website which displayed the slogan “There is no time for sucking it”, which is a misappropriation of the complainant’s slogan “There is no time for eating it.” The Panel based itself on the reproduction of the complainant’s trademarks to establish the likelihood of confusion and on the unjustified exploitation of the complainant’s slogan to establish the bad faith of the registrant.
Caution should therefore be exercised when acting against a domain name comprised of a slogan.