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UDRP Element 1: Identical or Confusingly Similar

By Eric Misterovich

Photo Credit: seier+seier

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.

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