A divided Eleventh Circuit panel affirmed a district court’s order granting summary judgment in favor of the defendant in a trademark dispute involving the Anti-Cybersquatting Consumer Protection Act (“ACPA”), Boigris v. EWC P&T, LLC, 2021 U.S. App. LEXIS 23399 (11th Cir. Aug. 6, 2021). The case further clarifies the test for whether marks are “confusingly similar” under the ACPA, but also highlights difficulties in its application.
EWC P&T, LLC (“EWC”) runs the nationwide beauty brand European Wax Center and owns a trademark registration for the mark “European Wax Center.” Boigris used GoDaddy.com to register the domain names “europawaxcenter.com” and “euwaxcenter.com.” EWC then sued Boigris under the ACPA, alleging that Boigris registered his domain names with a bad faith intent to profit from EWC’s trademark. The United States District Court for the Southern District of Florida granted summary judgment in favor of EWC. Boigris appealed the grant of summary judgment, arguing that a jury should decide whether the domain names are confusingly similar to EWC’s mark, but conceding that EWC’s mark is entitled to trademark protection and that he registered the domain names in bad faith and with intent to profit from EWC’s mark.
In an opinion authored by Judge Stanley Marcus, the Eleventh Circuit affirmed the district court’s grant of summary judgment in favor of EWC because no reasonable juror could conclude that “europawaxcenter” and “euwaxcenter” are not confusingly similar to “European Wax Center” in light of the marks being nearly identical in sight, sound, and meaning. The court began by analyzing the applicable statute to determine the elements that an ACPA plaintiff must prove in order to state a successful claim. First, the plaintiff must prove that the defendant must have had a bad faith intent to profit from the mark at issue. Second, the plaintiff must prove that (i) its trademark was distinctive at the time that the defendant registered the domain name at issue, and (ii) the domain name is identical or confusingly similar to the plaintiff’s trademark. Because Boigris did not challenge the district court’s findings that he acted with a bad faith intent to profit from EWC’s mark and that EWC’s trademark was distinctive when he registered the domain names at issue, the only issue for the Eleventh Circuit to consider was whether “europawaxcenter.com” and “euwaxcenter.com” were confusingly similar to “European Wax Center.”
Noting that the test for determining whether the mark and the domain name are “confusingly similar” is narrower than the traditional multi-factor test for “likelihood of confusion” in the context of trademark infringement, the court noted that Congress merely sought to require a comparison of the mark and the domain name for evaluating ACPA claims. Thus, although various courts have applied different standards in deciding whether a mark and a domain name are confusingly similar, the Eleventh Circuit focused on whether the mark and the domain name are so similar in sight, sound, and meaning that confusion is likely.
In this case, the court found that Boigris’s domain names were confusingly similar in sight, sound, and meaning to EWC’s trademark. First, Boigris’s domain names look the same as EWC’s mark. “Europawaxcenter” involves fifteen of the seventeen letters in EWC’s mark, and “euwaxcenter” involves eleven of the seventeen letters in EWC’s mark. The arrangement of the letters in the mark and the domain names are also nearly identical. Further, the minor differences in character count and arrangement here do not transform the domain name into another distinct and independently recognizable word. Second, Boigris’s domain names sound the same as EWC’s mark when pronounced, and the “waxcenter” portion of each phrase is identical in sound. Third, EWC’s mark and Boigris’s domain names have essentially the same meaning: waxing services that are European or associated with Europe. More specifically, the court noted that waxing styles are commonly denominated by an associated geographic location, and that a website visitor could easily assume that “eu” is short for “European.” The court further noted that “Europa” means “Europe” in Spanish, German, Italian, and Portuguese, which would render “Europa” almost identical in meaning to “European.” While other meanings of “eu” and “Europa” might exist, the court concluded that those meanings were not the most obvious, and thus the average internet user would not readily associate “eu” and “Europa” with meanings other than “European.” Thus, because the ACPA does not require an actual showing of a likelihood of confusion, the court held that no reasonable juror could reach any other conclusion except for that Boigris’s domain names and EWC’s mark were confusingly similar in sight, sound, and meaning.
Judge Newsom dissented, noting that Boigris’s domain names and EWC’s mark contain enough differences in sight, sound, and meaning that a reasonable juror could conclude that they are not confusingly similar. Emphasizing that the issue on appeal was whether a reasonable juror could conclude that the domain names are not confusingly similar to EWC’s mark, Judge Newsom noted that a reasonable juror could observe the small differences in appearance in EWC’s mark and Boigris’s domain names and find them insufficiently similar to cause confusion. Further, EWC’s mark and Boigris’s domain names include differences in rhythm, emphasis, and intonation, including a varying number of syllables. Thus, a reasonable juror might reasonably distinguish EWC’s mark and Boigris’s domain names on the basis of sound. Finally, a reasonable juror could conclude that “Europa” means a figure from Greek mythology and/or a satellite moon of Jupiter, and that “eu” means the European Union and/or the chemical element europium, or even refers to a prefix meaning “well.” Noting that the likelihood of confusion test under the Lanham Act is generally a question of fact for the jury, Judge Newsom concluded that a court’s role in determining a likelihood of confusion is limited to instances of extraordinary similarity or dissimilarity. Because this is not such an “extraordinary” instance, the issue of whether Boigris’s domain names and EWC’s mark were confusingly similar should have remained a question of fact for the jury.
Posted by Vivian Chew.