Greek God or Continent? Defining “Confusing Similarity” under the Anti-Cybersquatting Consumer Protection Act
Examining whether a registered mark and a domain name were confusingly similar under the Anti-Cybersquatting Consumer Protection Act (ACPA), the US Court of Appeals for the 11th Circuit affirmed the district court’s grant of summary judgment in favor of the trademark owner because the mark and domains are nearly identical in sight, sound and meaning. Boigris v. EWC P&T, LLC, Case No. 20-11929 (11th Cir. Aug. 6, 2021) (Marcus, J.) (Newsom, J. dissenting). The registered trademark is “European Wax Center” and the domain names in issue are “europawaxcenter.com” and “euwaxcenter.com.”
EWC runs a nationwide beauty brand titled European Wax Center that offers hair removal services and beauty products and also holds a trademark under the same name. Since 2015, EWC sold cosmetics under the marks “reveal me,” “renew me” and “smooth me.” Bryan Boigris has no direct background related to the production of beauty products, but in April 2016, he claimed an intent to begin selling such products and attempted to register trademarks at the US Patent & Trademark Office (PTO) for “reveal me,” “renew me” and “smooth me,” none of which had been used in commerce before by Boigris. Boigris also registered 11 domain names including, “euwaxcenter.com” and “europawaxcenter.com.” Upon discovery of Boigris’s pending applications, EWC filed for its own trademark applications for “reveal me,” “renew me” and “smooth me” and filed an opposition to Boigris’s pending applications at the Trademark Trial and Appeal Board (TTAB). The TTAB sustained the oppositions.
Boigris elected to contest the TTAB’s decision in district court. Specifically, Boigris sought reversal of the TTAB’s decision and an affirmative declaration that he was entitled to register the disputed marks. EWC counterclaimed for an affirmation of the TTAB’s decision as well as declaratory judgment that it had priority rights in the disputed marks, that Boigris’s use constituted infringement under the Lanham Act, damages and an injunction under the ACPA against Boigris’s use of the two domains, “europawaxcenter.com” and “euwaxcenter.com.” EWC moved for summary judgment on all of its claims, which the district court granted. Boigris appealed the ACPA decision only.
Under the ACPA, a trademark holder must prove that: (1) its trademark was distinctive when the defendant registered the challenged domain name; (2) the domain name is identical or confusingly similar to the plaintiff’s trademark and (3) the defendant registered the domain name with a bad faith intent to profit. Boigris challenged the second element only and did not contest that EWC’s trademarks were distinctive or that he registered the domains in bad faith. Specifically, Boigris argued that the issue of whether or not the “European Wax Center” mark and the “europawaxcenter.com” and “euwaxcenter.com” domains are confusingly similar should have been a question for the jury.
The 11th Circuit affirmed the district court’s ruling, determining that no reasonable jury could conclude that Boigris’s domain names are not confusingly similar to EWC’s mark. The Court acknowledged the difference between the Lanham Act’s traditional multi-factor likelihood of confusion test for trademark infringement and the test for confusing similarity, noting that “[t]he ACPA requires a comparison solely of the mark and the allegedly infringing domain names in order to determine whether they are so similar in sight, sound, or meaning that confusion is likely.” Upon analysis under each of the sight, sound and meaning comparisons, the Court concluded that no reasonable juror could reach any conclusion other than that the domain names were confusingly similar to the registered mark.
Judge Kevin Newsom issued a dissenting opinion, noting that the domain names contain enough differences in sight, sound and meaning that a reasonable juror could conclude that they are not confusingly similar. As Judge Newsom explained, the question “isn’t whether we [the Justices of the 11th Circuit] think that the domain names and mark are confusingly similar , but rather whether a reasonable juror could conclude [as much].” Upon analyzing the sight, sound and meaning test, the dissent noted various differences between the mark and the domains that a juror could use to support its conclusion that the marks are not similar. For example, under the sound test, the dissent noted differences in rhythm, emphasis and intonation between “Europa,” which has three syllables and places emphasis on the second syllable, and “European,” which has four syllables and places emphasis on the third. More strikingly, according to the dissent, Europa has multiple different meanings that are entirely distinct from European, which is used to denote an association with Europe. Europa can also reference, among other things, a figure in Greek mythology or a satellite moon of the planet Jupiter. As Rule 56 requires that all inferences be made in favor of the non-moving party, the dissent reasoned that these differences could have persuaded a reasonable juror to find that the marks and domains were not confusingly similar.
Practice Note: Upon application of the sight, sound and meaning test, the majority noted that the test is not defined in the ACPA statute itself. The majority noted, “[t]here is no requirement, in statute or in case law, that a domain name be similar to a mark in sight, sound, and, meaning in order to be confusingly similar as a matter of law.” This emphasis on the conjunctive aspect of the list implies that a strong showing in any one or two of the categories may be enough proof to find confusing similarity as a matter of law in ACPA disputes.