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In case you missed it, we provided a general overview of the UDRP process here. This post, however, takes a closer look at the first element of the UDRP test, being what makes a mark identical or confusingly similar to a domain name? How can a mark holder prove the first element in the UDRP analysis?

Establishing rights in a mark can be accomplished relatively easily if the mark is registered or well established. Proving the rest of the first element, however, requires mark holders to keep a few things in mind.

What does confusingly similar mean?

The UDRP considers a domain name and mark confusingly similar if there is a likelihood of Internet user confusion. To determine such likelihood, the UDRP typically compares the visual or aural components of the mark with the alphanumeric string in the domain name. However, the comparison does not always produce a straightforward outcome. For example, a misspelling my not meet the confusingly similar standard.

The Canadian start up Groovle, a website that allows users to customize their Internet start page, won a domain name dispute against Google in 2009. The UDRP panel ruled “GROOVLE.COM” was not confusingly similar to “GOOGLE.COM.”

While Google argued Groovle was a mere misspelling of its name, the panel ultimately sided with Groovle, which argued the letters “r” and “v” sufficiently distinguish the two words. Therefore, even a derivative of another company’s trademark may prevail in a UDRP proceeding.

Does a complainant have UDRP rights in a trademark that was registered after the domain name was registered?

Registration of a domain name before a trademark does not prevent a finding of confusing similarity. In fact, the UDRP makes no specific reference to the date on which a mark was registered.

However, registration of a domain name prior to the registration of the similar mark may help disprove that the domain name was registered in bad faith under the third element of the UDRP.

Does a complainant have UDRP rights in a personal or geographical name?

A personal name that has been registered with the Unites State Patent and Trademark Office (USPTO) is generally protected under the UDRP. While the UDRP does not specifically protect personal names that have not been registered, where the name is being used for trade or commerce, the complainant may be able to establish unregistered trademark rights in the name. The complainant must show use of the name as a distinctive identifier of goods or services offered under that name.

Geographical names, on the other hand, have not generally been extended protection under the UDRP. Some geographical terms, however, can be protected under the UDRP, if the complainant can show that the term has gained secondary meaning within the market. In other words, the claimant must show that the geographical name has come to be known by consumers as identifying the particular good or service.

New companies should always consult a trademark lawyer and check the Trademark Electronic Search for federally registered trademarks before registering a domain name. For more information about UDRP and if your domain name is confusing similar to a registered mark, contact Revision Legal’s Internet attorneys through the form on this page or call 855-473-8474.

The Role of TLD Suffixes in the Analysis

UDRP panels generally disregard the top-level domain suffix — “.com,” “.net,” “.org,” “.co” — when conducting the confusing similarity analysis. The technical necessity of a TLD means its presence or absence is not a distinguishing feature. Generic or descriptive additions to a mark generally do not defeat a confusing similarity finding either. Panels routinely find that adding words like “buy,” “shop,” “online,” “best,” or geographic terms to a complainant’s mark does not sufficiently distinguish the domain. The rationale is that a consumer seeing such a domain would immediately associate it with the mark holder, not an unrelated source.

Common Law Trademark Rights and the First Element

A complainant does not need a federally registered trademark to satisfy Element 1. UDRP panels recognize common law trademark rights established through actual use of a mark in commerce. To prove common law rights, the complainant must demonstrate that the mark has acquired distinctiveness in connection with its goods or services. Evidence of continuous use, advertising expenditures, sales volume, customer declarations, and press coverage all support a finding of common law rights.

This standard creates both an opportunity and a vulnerability. Complainants with strong unregistered brands — a well-known podcast, blog, or regional business — may satisfy Element 1 even without USPTO registration. Conversely, respondents defending against complaints based solely on common law rights have more room to challenge whether those rights actually exist, how geographically limited they may be, and whether they pre-date the domain registration at issue.

Typosquatting and Phonetic Equivalents

Typosquatting — registering domains that substitute, add, omit, or transpose letters from a famous mark — almost always satisfies the first UDRP element. Classic examples include replacing an “i” with a “1,” omitting a double letter, or adding a hyphen. The UDRP’s internet user confusion standard is easily met when the domain is a predictable typographical error away from the mark. Panels do not require evidence of actual consumer confusion; the likelihood of confusion is inferred from visual and phonetic similarity.

Confusing similarity extends beyond identical spelling. UDRP panels have found confusing similarity where a domain is a phonetic equivalent of a mark — for example, using the number “4” in place of the word “for,” or “2” in place of “to.” Similarly, panels have found confusing similarity where a domain translates a well-known English trademark into a foreign language, particularly where the complainant operates in that linguistic market.

What Element 1 Does Not Require

It is important to understand what the first element does not require. Unlike federal trademark infringement under the Lanham Act, the UDRP does not require proof of actual confusion among consumers. The panel need not find that a significant number of actual internet users were actually deceived. The question is simply whether the domain name, when compared against the mark, creates a likelihood of confusion under a visual or aural analysis. This lower threshold makes Element 1 the easiest of the three UDRP elements to satisfy for a complainant with a strong, distinctive mark.

Building a Strong Element 1 Argument as Complainant

To maximize your chances of satisfying Element 1, a UDRP complainant should submit: (1) proof of trademark registration, including the registration date, registration number, and a printout from the USPTO or applicable foreign trademark office; (2) for common law rights, a declaration detailing years of use, sales figures, marketing spend, and geographic reach; (3) a side-by-side comparison of the mark and the domain string annotated to highlight similarity; and (4) any prior UDRP or court decisions that found similar domains confusingly similar to the same mark.

Contact Revision Legal’s Domain Dispute Attorneys

Satisfying the first UDRP element is necessary but not sufficient to recover your domain. Elements 2 and 3 — lack of legitimate interest and bad faith registration and use — must also be proven. Revision Legal’s domain dispute attorneys have handled UDRP proceedings before both WIPO and the National Arbitration Forum and can evaluate the strength of all three elements in your case. Contact us today to discuss your domain dispute options.