By Steve Levy
Those who are familiar with the UDRP know that par. 4(a)(i) requires a brand owner to prove that a disputed “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. It’s important to note that this latter portion is not the same as the often complex “likelihood of confusion” tests applied by the courts in trademark infringement cases. Rather, the WIPO Overview, at 1.7, notes that this is a “relatively straightforward comparison between the complainant’s trademark and the disputed domain name” and it goes on to not that it “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”
Some commentators take a deep dive and ask the question of what does the word “confusingly” add to the word “similar”? In other words, can a domain name be similar a trademark without being confusingly so? Many UDRP decisions consider whether a disputed domain name is confusingly similar in “sight, sound, and meaning” to a trademark. Much of this turns on a balancing of such factors as how distinctive and famous is the trademark in question and what other terms appear in the domain name? For example, where a Respondent claimed that it was creating a protest website, one panel found that “[t]he addition of the graphic vulgarity ‘fuck’ means that the [fuckcalvinklein.com] domain name is neither identical to the Calvin Kline mark nor is it confusingly similar.” In another case, the descriptiveness of the domain name scheduleflow.com led the panel to find that it was not confusingly similar to the trademark SCHEDUFLOW despite the difference of only two letters.
Apart from the fact that many trademark lawyers underestimate the UDRP in various ways, even some who have had experience with the Policy may go ahead with a claim assuming that the confusingly similar test is just a threshold or standing requirement that is easily passed. And it is – most of the time. The above decisions, however, should give one pause to very carefully consider whether a domain name that is clearly similar to a trademark is also confusingly so under UDRP standards. This nuanced assessment of a possible claim, in advance of filing a complaint, could avoid making a difficult trademark situation worse.