Misses Layup, Loses Domain Name — Subway Lawyer

Subway doesn’t meet low burden of proof and loses domain dispute.

When you see a UDRP case for the domain name MySubwayRewards.com, you assume that the sandwich chain will get a slam dunk. It ought to be an easy case, especially when the respondent uses the domain name to promote free gift cards to Subway. But that doesn’t mean the complainant gets away without making a basic case.

That’s exactly what happened in the case of Doctor’s Associates Inc. v. Atomix. Doctor’s Associates, which operates and franchises the Subway chain of sandwich restaurants, failed to submit enough evidence to show that MySubwayRewards.com was confusingly similar to the firm’s Subway marks. Following all, on the surface the domain name could be used to reward people for riding the Fresh York City Metro.

The panelist wrote:

Complainant, still, offers no evidence that it has rights in the mark MY SUBWAY REWARDS, or SUBWAY REWARDS, or MY SUBWAY, nor any explanation or argument as to why the phrase “mysubwayrewards” in the domain name is identical or confusingly similar to the mark SUBWAY.

In other words, give me something — anything — that shows you’re making an effort here rather than counting this case as a done deal.

In this Panel’s view, it is insufficient simply to demonstrate rights in a word that forms a part of a domain name particularly where, as here, the mark itself, SUBWAY, is bracketed between other words which could quite conceivably be used in combination to convey meaning unassociated with the SUBWAY mark per se. It becomes necessary, especially in such cases, for a complainant to advance arguments sufficient to demonstrate identity or confusing similarity of the domain name to the mark at issue. A “trademark owner does not necessarily ‘own’ all combinations of marks using its principal word.”…

…Although the burden of proof under the first element is not a high one (Research in Motion Limited, supra) the Panel considers that it is nevertheless incumbent on a complainant to make its case as to identity or confusing similarity. To conclude that the domain name mysubwayrewards.com has been shown on the limited pleadings submitted to be identical or confusingly similar to the mark SUBWAY requires a leap that this Panel is not comfortable making.

Ouch.