“The inclusion of a word within a domain name that happens to be a homonym of some other word generally will not, without more, create a genuine issue of fact as to confusing similarity. At the very least, it does not do so when, as here, the rest of the domain name is identical in sight, sound, and meaning to the mark.” – Majority opinion
On August 6, the U.S. Court of Appeals for the Eleventh Circuit issued a decision in Boigris v. EWC P&T, LLC in which the appellate court affirmed a ruling by the Southern District of Florida granting summary judgment to EWC, the owner of the nationwide European Wax Center chain of beauty salons, on cybersquatting claims filed against the owner of several GoDaddy domains that were registered in bad faith to profit from EWC’s stores. Although the majority found that the accused domain names and EWC’s registered trademarks were confusingly similar in sight, sound and meaning, the dissent raises interesting questions regarding the proper standard on confusing similarity at the summary judgment stage.
Boigris’ Trademark Applications Leads to Cybersquatting Counterclaims from EWC
The case underlying the present appeal goes back to a series of trademark applications filed in April 2016 by appellant Bryan Boigris, who had no prior experience in the beauty industry, seeking to register marks covering branding that European Wax Center had begun using in 2015. EWC eventually brought opposition proceedings to the Trademark Trial and Appeal Board (TTAB), which cancelled Boigris’ trademark applications. Pursuant to 15 U.S.C. § 1071, Boigris chose to appeal the TTAB’s findings to district court rather than the Federal Circuit. EWC counterclaimed, raising claims for statutory damages under the Anti-Cybersquatting Consumer Protection Act (ACPA) over Boigris’ registration of several domain names at GoDaddy.com that EWC argued were confusingly similar to EWC’s trademarks, including “europawaxcenter.com” and “euwaxcenter.com.” In granting summary judgment on the ACPA claims to EWC, the district court found that the “European Wax Center” trademark was distinctive, that Boigris’ domain names mostly incorporated EWC’s mark such that they were confusingly similar, and the domain names were registered out of a bad faith intent to profit.
On appeal, Boigris only challenged the court’s holding that his domain names were confusingly similar to EWC’s trademark as a matter of law at the summary judgment stage; Boigris challenged neither the determination that EWC’s mark was distinctive nor the district court’s finding that his domain names were registered in bad faith. The Eleventh Circuit’s majority opinion, authored by Circuit Judge Stanley Marcus, noted that the inquiry for confusing similarity under the ACPA was a narrower inquiry than the multi-factor likelihood of confusion test employed in trademark infringement cases. Citing to McCarthy on Trademarks and Unfair Competition and a pair of district court decisions on ACPA claims, Judge Marcus stated that the ACPA required a simple comparison of the domain name and asserted mark for similarities in sight, sound and meaning without regard to the top level domain name (i.e.: “.com”) or any differences in capitalization.
Slight Differences in Meaning Outweighed by Striking Sight, Sound Similarities
Assessing these factors, the Eleventh Circuit majority found that Boigris’ domain names were similar to EWC’s mark by sight, as each domain name both used at least 11 of the 17 letters making up EWC’s mark and were laid out in a similar arrangement. In sound, the Eleventh Circuit found similar pronunciations between the domain names and EWC’s mark, especially in the “waxcenter” portion of the domain names. The Eleventh Circuit also found a similar meaning, as the domain names and EWC’s mark refer to wax services that are European or associated with Europe.
The appellate majority was not swayed by arguments that “eu” and “europa” in the domain names could carry other meanings. While either term could conceivably be references to Greek mythological figures or the name of one of Jupiter’s moons, the use of “waxcenter” in the domain names made it more likely that internet readers would associate the domain names with European-style wax instead.
Boigris asserts that there is enough of a dispute about the meaning of the domain names to defeat summary judgment, even though the domains and the mark are plainly confusingly similar in sight and sound… We remain unpersuaded. The inclusion of a word within a domain name that happens to be a homonym of some other word generally will not, without more, create a genuine issue of fact as to confusing similarity. At the very least, it does not do so when, as here, the rest of the domain name is identical in sight, sound, and meaning to the mark.
On the record presented to the Eleventh Circuit, the majority determined that it was not necessary in this appeal to decide whether an asserted difference in meaning could create a genuine issue of material fact to survive summary judgment when the sight and sound factors were convincingly similar. “What we have here is overwhelming similarity in sight and sound plus an identical meaning in the core of each disputed phrase (“waxcenter”), all against a whisper of a difference in meaning across a single modifier subpart of each phrase,” Judge Marcus’ opinion said. Given the striking similarities in sight and sound, marginal differences in meaning didn’t create a genuine issue of material fact such that a reasonable juror could possibly conclude that Boigris’ domain names and EWC’s mark weren’t confusingly similar.
Judge Newsom Dissent: Reasonable Jurors Can Distinguish Slight Differences in Sight, Sound
While the Eleventh Circuit majority rejected Boigris’ argument that confusing similarity under the ACPA is an inherently factual question that must be determined by a jury, Circuit Judge Kevin C. Newsom authored a dissenting opinion arguing that enough differences in sight, sound and meaning existed that a ruling on summary judgment was not appropriate. While Judge Newsom acknowledged that the Eleventh Circuit had yet to describe the metes and bounds of “confusingly similar” within the meaning of the civil action created by the ACPA at 15 U.S.C. § 1125(d), the majority applied the sight, sound and meaning analysis “in ways that can’t be reconciled with summary-judgment law and practice.”
Whereas the Eleventh Circuit majority found striking similarities between the sight and sound of Boigris’ domain names and EWC’s mark, Judge Newsom noted that there were slight differences in either that could lead a reasonable jury to find the domain names distinguishable from the mark. Judge Newsom also took issue with the majority’s decision to give significant weight to the domain names’ use of “waxcenter” in disregarding other possible meanings for “eu” and “europa,” finding such analysis to be improper under the summary judgment standard, in which all inferences are to be drawn in favor of the non-movant, in this case Boigris.
“I don’t mean to suggest that any difference in sight, sound, and meaning— however negligible—necessarily precludes summary judgment for the trademark owner and requires a trial,” Judge Newsom wrote. However, tracing Eleventh Circuit case law on likelihood of confusion under the Lanham Act, he argued that the cases “suggest that a court’s role in determining likelihood of confusion is a limited one—reserved for instances of pretty extraordinary similarity or dissimilarity.” Here, the alleged similarities weren’t extraordinary, in part because the domain names didn’t share an identical proper name with EWC’s mark, there was no overwhelming visual similarity, and the domain names had a range of meanings that were improperly excluded by the majority.
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