The eleventh circuit confirms the summary judgment on the cybersquatting allegations filed by the owner of the brand “European Wax Center”
“The inclusion of a word in a domain name that happens to be the namesake of another word will generally not create, without more, a real problem of fact as to a puzzling similarity.” At the very least, it doesn’t when, as here, the rest of the domain name is identical in sight, sound and meaning to the brand. – Majority opinion
On August 6, the United States Court of Appeals for the Eleventh Circuit rendered a decision in Boigris v. CEE P&T, LLC in which the appeals court upheld a South Florida District decision granting summary judgment to EWC, the owner of national beauty salon chain European Wax Center, over cybersquatting claims filed against the owner of multiple estates GoDaddy who have been registered in bad faith to profit from EWC stores. Although the majority considered that the offending domain names and EWC trademarks were similar in appearance, sound and meaning, the dissent raises interesting questions about the appropriate standard for puzzling similarity at the development stage. summary judgment.
Boigris trademark claims lead to EWC cybersquatting counterclaims
The case underlying this action dates back to a series of trade mark applications filed in April 2016 by the applicant Bryan Boigris, who had no previous experience in the beauty industry, seeking to register trade marks covering the brand image that European Wax Center had started using in 2015. EEC finally brought opposition proceedings before the Trademark Trial and Appeal Board (TTAB), which quashed Boigris’ trademark applications. In accordance with 15 USC § 1071, Boigris chose to appeal the TTAB’s findings to the district court rather than the federal circuit. EWC has filed a counterclaim, raising claims for damages under the Consumer Protection Against Cyber Squatting Act (ACPA) regarding Boigris’ registration of several domain names on GoDaddy.com which EWC claims were similar to EWC’s brands, including “europawaxcenter.com” and “euwaxcenter .com. In granting summary judgment on ACPA’s claims to the EWC, the district court ruled that the” European Wax Center “trademark was distinctive, that Boigris’s domain names primarily incorporated EWC’s trademark so that they were confusingly similar, and the domain names were registered with a bad faith intent to profit.
On appeal, Boigris only challenged the court’s ruling that its domain names were so similar as to lead to confusion with the EWC trademark in law at the summary judgment stage; Boigris did not dispute either the determination that EWC’s trademark was distinctive or the district court’s finding that its domain names were registered in bad faith. The Eleventh Circuit Majority Opinion, written by Circuit Judge Stanley Marcus, noted that the similarity confusion investigation under the ACPA was a narrower investigation than the multifactorial confusion likelihood test used in the cases. trademark infringement. Quoting to McCarthy on Trademarks and Unfair Competition and a pair of district court rulings on ACPA’s claims, Judge Marcus said the ACPA required a simple comparison of the domain name and trademark claimed for visual, sound and meaning similarities without considering account of the top-level domain name (ie: “.com”) or any capitalization difference.
Slight differences in meaning counterbalanced by striking sight, sound similarities
By evaluating these factors, the majority of the Eleventh Circuit found that Boigris domain names were similar to the EWC mark on sight, as each domain name used both at least 11 of the 17 letters that make up the EWC mark and was presented in a similar arrangement. Sound wise, the Eleventh Circuit found similar pronunciations between domain names and the EWC brand, especially in the “waxcenter” part of domain names. The Eleventh Circuit has also found a similar meaning, as the domain names and the EWC brand refer to wax services that are European or associated with Europe.
The majority of the appeal was not swayed by arguments that “eu” and “europa” in domain names might have other meanings. While either term could possibly refer to Greek mythological figures or the name of one of Jupiter’s moons, the use of “waxcenter” in domain names has made it more likely that readers Rather, the Internet associates domain names with European-style wax.
Boigris claims that there is enough dispute over the meaning of domain names to defeat summary judgment, even though the domains and the mark are obviously similar to the visual and aural confusion… We are not convinced. The inclusion of a word in a domain name that happens to be a homonym of another word will generally not create, without more, a real problem of fact as to a puzzling similarity. At the very least, it doesn’t when, as here, the rest of the domain name is identical in sight, sound and meaning to the brand.
In the case before the Eleventh Circuit, the majority determined that it was not necessary in this appeal to decide whether an alleged difference in meaning could create a genuine question of fact important to survive summary judgment when the visual and sound were convincingly similar. “What we have here is an overwhelming similarity in sight and sound, as well as an identical meaning at the heart of every contested sentence (‘waxcenter’), all against a whisper of a difference in meaning to through a single modifying sub-part of each sentence, “Judge Marcus,” opinion says. Given the striking similarities in sight and sound, marginal differences in meaning have not created a true problem of material fact such as a A reasonable juror could possibly conclude that Boigris’s domain names and EWC’s brand were not so similar as to be confusing.
Judge Newsom dissent: reasonable jurors can distinguish slight visual and aural differences
While the Eleventh Circuit majority rejected Boigris’ argument that confused similarity under APAC is an inherently factual issue that must be determined by a jury, Circuit Judge Kevin C. Newsom wrote an opinion dissenting claim that there were enough differences in view, sound and meaning for a summary judgment decision was not appropriate. While Justice Newsom acknowledged that the Eleventh Circuit had not yet described the limits and limits of “similar to confusion” within the meaning of the civil action created by the ACPA in 15 USC § 1125 (d), the majority applied the analysis of sight, sound and meaning “in a manner which cannot be reconciled with the law and practice of summary judgments”.
While the majority of the Eleventh Circuit found striking similarities between the sight and sound of Boigris domain names and the EWC brand, Judge Newsom noted that there were slight differences in either or other which could lead a reasonable jury to find the domain names distinct from the mark. Justice Newsom also challenged the majority’s decision to give significant weight to the use by domain names of “waxcenter” by ignoring other possible meanings for “eu” and “europa”, arguing that a such an analysis was inappropriate with regard to the standard of summary judgment, in which all inferences are to be drawn in favor of non-movement, in this case Boigris.
“I do not mean to suggest that any difference in sight, sound and meaning – however negligible – necessarily precludes summary judgment for the trademark owner and necessitates a trial,” Justice Newsom wrote. However, retracing the Eleventh Circuit jurisprudence on likelihood of confusion under Lanham Act, he argued that the cases “suggest that a court’s role in determining likelihood of confusion is limited – reserved for cases of quite extraordinary similarity or dissimilarity ”. Here, the alleged similarities were not extraordinary, in part because the domain names did not share an identical proper name with the EWC brand, there was no overwhelming visual similarity, and the domain names had an range of meanings that have been wrongly excluded by the majority.
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Steve Brachmann is a freelance journalist based in Buffalo, New York. He has worked professionally as a freelance for over a decade. He writes about technology and innovation. His work has been published by Buffalo News, Hamburg sun, USAToday.com, Chron.com, Motley Fool, and OpenLettersMonthly.com. Steve also provides website copies and documents to various business clients and is available for research projects and independent work.