Identical or Confusing Similarity for Purposes of the First Element in UDRP Proceedings
by Ivan Lipshitz, Adv., JMB Davis Ben-David
In this article I discuss “ Identical or Confusing Similarity “ in the context of establishing the First Element under the requirements of paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”).
In my previous articles on this subject (here and here), I wrote that to succeed in a complaint under the UDRP, the complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
Identical or Confusing Similarity
Once having established that a Complainant has rights in the trademark or service mark corresponding to the disputed domain name, the standing or threshold test involves a visual and aural comparison of the disputed domain name to the proven trademark. Such comparison is generally considered to be relatively straightforward. However, , if one examines some recent decisions handed down by UDRP panelists, while such a comparison should be relatively straightforward, this is not always the case, and each complaint must be considered on its own merits and its own facts, before a successful transfer or cancellation finding of the abusive domain name will be handed down by a UDRP Panel.
This “Identical or Confusing Similarity” test 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 identical or recognizable within the domain name. (See section 1.7 of the WIPO Overview 3.0). If the Panel considers that the disputed domain name appears to be identical to the trademark, identity will generally be found. Numerous UDRP panels have held that where a domain name incorporates a complainant’s trademark in its entirety, or where at least a dominant feature of the relevant mark is recognizable in the domain name, this would be sufficient for the purposes of the Policy. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Thus, in Travellers Exchange Corporation Limited v. Craig Stepnell Travel Pty Ltd WIPO Case No. DAU2022-0028 it was questionable whether “The Travel Exchange” is deceptively similar to “TRAVELEX “ so as to cause a likelihood of confusion. Upon such an analysis, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant to the UDRP at this stage of the enquiry. Such matters, if relevant, may fall for consideration under the other elements of the Policy, such as bad faith, for example. (See inter alia WIPO Overview 3.0, section 1.7). In undertaking the above -referenced comparison and analysis, it is permissible for the Panel to disregard the generic Top Level Domain “(gTLD) “.com” or country code Top-Level Domain (“ccTLD”) “.co” component as a functional aspect of the domain name system for the purpose of such comparison under paragraph 4(a)(i) of the Policy. (WIPO Overview 3.0, section 1.11).
Recent WIPO panel decisions confirming the application of the above principles can be seen in: Solvay SA v. Broskin Mansaga, Cloushd Sidnasta B. Ltd WIPO Case No. DCO2022-0102, finding that the complainant had established the “Identical or Confusingly Similarity” element and that the typo- squatted disputed domain name <sovlay.co> to be confusingly similar to the complainant’s distinctive and well-known “SOLVAY” mark since it consists of the mark in its entirety, merely transposing the letters “vl” for the letters “lv”; Philip Morris Products S.A. v. Han Jin Hee WIPO Case No. D2022-4159 finding the disputed domain name <yariqos.com> included the Complainant’s trademark “IQOS” in its entirety together with the addition of a non-distinctive term “yar”, and Gallery Department, LLC v. Ahmad Akram WIPO Case No. D2022-4078, in which the disputed domain name <gallerydeptofficial.com> incorporated the complainant’s “GALLERY DEPT.” trademark in its entirety. The Panel’s assessment in all the above cases was that adding such terms does not prevent a finding of confusing similarity between the disputed domain name and the complainant’s trademark and does not change the overall impression of the disputed domain name as being confusingly similar to the complainant’s trademark. In the latter case, the Panel found that the confusing similarity was obvious in this case as only one word “official” in the disputed domain name, <gallerydeptofficial.com> had been added to the textual components of the complainant’s “GALLERY DEPT.” trademark, and it had merely removed the “dot” in this case. Finally, in Kuomiokoski Oy v. Client Care, Web Commerce Communications Limited WIPO Case No. D2022-4765 the complainant, a shoe and children`s outerwear manufacturer in Finland offering shoes and boots under the trademark “KUOMA” and marketing its products on line at its website <kuoma.fi> brought a domain name dispute resolution complaint to the WIPO Center against the domain name holder of the domain name <kuomasaapad.com> alleging domain name abuse on the grounds that the disputed domain name resolves to a website offering counterfeit shoes and boots under the “KUOMA” trademark. The Panel held that the disputed domain name is confusingly similar to the “KUOMA” trademark in which the complainant has rights because it incorporates such trademark in its entirety, and the addition of the descriptive word “saapad” (which means “boots” in the Estonian language) was not sufficient to avoid confusing similarity.
How are trademark registrations with design elements treated in assessing identity or confusing similarity?
UDRP Panels have held that it is appropriate to disregard the design elements of a trademark or disclaimed text under the first element as such elements are generally incapable of representation in a domain name. In the recent WIPO Center panel decision of Federación Nacional de Cafeteros de Colombia v. Vince Harasymiak, Domain Capital WIPO Case No. D2022-4022, the trademark at issue was, “CAFÉ DE COLOMBIA”, a device or figurative mark containing text, which the complainant used in support of its activity in promoting Colombian coffee in the following form:
Respondent accepted that the complainant owned the “CAFÉ DE COLOMBIA” mark but contended that it did not use this mark as a trademark indicating the source of the goods in question, but rather as a geographic indicator and designation of origin (“DO”). Thus, it did not have the necessary standing to bring a UDRP complaint. It argued that DO-related trademarks are not appropriate for the UDRP and do not serve as unique brand identifiers. The Panel ruled that, to the extent, that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. However, where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, or where the trademark registration entirely disclaims the textual elements, the scope of protection afforded to the mark is effectively limited to its stylized elements, and a panel may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP. In the present case, it was debatable whether the design elements of the “CAFÉ DE COLOMBIA” figurative mark does indeed comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence. The Panel also noted that the words “CAFÉ DE COLOMBIA” are descriptive. Ultimately, however, the Panel did not need to reach a conclusion on this issue dismissing the complaint and basing its denial of the complaint on its further reasoning as to the legitimate interest and bad faith elements.
The UDRP Policy is concerned with the abusive registration of domain names. It is the domain name itself which must at least be confusingly similar to the Complainant’s trademark. Typically, domain name abuse most often takes place by way of typo-squatting. Typo -squatting is a kind of cybersquatting in which a domain name registrant registers a domain name which consists of a common, obvious, or intentional misspelling of a domain name to take advantage of typing errors made by internet users seeking a complainant’s website. Once having established that there is a trademark or service mark in which it has rights, the complainant must satisfy the requirements of paragraph 4(a)(i) of the Policy. This requires that for a mark to be considered by panels to be confusingly similar to the relevant mark, the mark must be compared with the disputed typo-squatted domain name. Provided the dominant feature of the relevant mark remains recognizable within the disputed typo-squatted domain name, a Panel will most likely find that the disputed domain name is confusingly similar to that mark for purposes of UDRP standing, and that the insertion of a single, or additional letters in the disputed domain name does not prevent a finding of confusing similarity. It is well-established practice to disregard generic Top-Level Domain “(gTLD) “.com” or country code Top-Level Domain (“ccTLD”) “.co”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. As regards design elements within a domain name, panels have typically ruled that it is appropriate to also disregard these elements of a trademark or disclaimed text under the first element as such elements are generally incapable of representation in a domain name.
In the penultimate and final articles in this series, I will examine the “no rights or legitimate interests” and the “registered and used in bad faith” requirements in respect of the disputed domain name.
If any of your trademarks may be subjected to domain name abuse and you need assistance to file a domain name dispute resolution complaint to secure or enforce your digital brand, or need assistance in developing an enforcement strategy to safeguard your digital assets from all forms of infringement, violation and abuse,or where a trademark holder is challenging your domain name, please email Ivan Lipshitz at: Ivan.Lipshitz@jmbdavis.com or JMBmail@jmbdavis.com.