UDRP Perspectives All Topics

1.8 Confusingly Similar

A side-by-side comparison of the domain name and the trademark determines whether the disputed domain name is confusingly similar to a Complainant’s trademark. Mere “similarity” is insufficient under the Policy, it must be “confusing similarity”. Confusing similarity does not depend on evidence of actual confusion by the public. Rather, the question is whether the appearance of the domain name itself causes confusion with the trademark.

Confusing similarity is a higher threshold than mere similarity but in most cases it is not a difficult test to meet. Where a domain name merely adds on a descriptive term such as “shop” or “store” to a distinctive trademark or where a the domain name is a typo of a distinctive mark, Panels will generally find that a domain name is confusingly similar. Where however, the inclusion of additional characters or words results in a new term, a sufficiently different term, conveys a different meaning, or otherwise sufficiently differentiates or distances itself from the trademark, the domain name may not be confusingly similar. Although the first part of the test can be considered preliminary in the sense that only an identical or confusingly similar trademark qualifies for a UDRP and thereby confers “standing” so that the Complainant can proceed onto the second and third parts of the test, it is no more nor less important than the other parts of the test. Panelists should apply an appropriate amount of focus on this part of the test as they do the other parts of the test.

Sometimes Panels may consider broader circumstances of a case to establish confusing similarity such as content of the website, registrant’s conduct, any use of the mark by the Complainant (e.g. use of an abbreviation of the mark). However, “broader circumstances analysis” should be used as an additional factor in assessing confusing similarity rather than a substitute for a confusing similarity test.

Additional Information

Relevant Decisions

Nostrum Oil & Gas Plc v. MERCY 3fold, JOY, WIPO D2024-1519, <zhmnllp.com>, Denied

Here, the only non-disclaimed term of the Complainant’s trademark is “NOSTRUM”, and there is no similarity between the disputed domain name and this term.

Athesia Kalenderverlag GmbH v. Heroux Leslie, WIPO D2024-1590, <harenshop.com>, Transfer

The Panel finds the HARENBERG trademark is recognizable within the disputed domain name, because its dominant part “haren” is included as the first part of the disputed domain name, and the trademark and the disputed domain name share the same structure “haren + [dictionary word]”.  The second part of the HARENBERG trademark is the German word for “mountain”, while the second part of the disputed domain name is the dictionary word “shop”.  Also, although the addition of other terms (here, “shop”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the HARENBERG trademark for the purposes of the Policy.  Accordingly, the disputed domain name is confusingly similar to the HARENBERG trademark for the purposes of the Policy.  See WIPO Overview 3.0, sections 1.7 and 1.8.  It is also notable that the website at the disputed domain name offers Harenberg calendars and contains the header “& Harenberg Kalender Online Geschaft – Harenshop” (translated in English as “& Harenberg Calendar Online Shop – Harenshop”), which prima facie indicates that the Respondent seeks to target the HARENBERG trademark through the disputed domain name.  See section 1.15 of the WIPO Overview 3.0.

The Optimism Foundation v. Feiling Huang, Forum FA2404002095155, <opns.domains>, Denied

To state that the letters “opns” in the disputed domain name are confusingly similar to the trade mark OPTIMISM and that the disputed domain name “incorporates Complainant’s trademarks” is a stretch, since the trade mark OPTIMISM is not at all recognizable within the domain name. The Panel does not agree as a general principle that abbreviations per se can be said to be confusingly similar to a trade mark. Each case has to be considered based on its own facts and argued on its own merits.

Blick Art Materials, LLC v. hai hong, Forum FA2404002092839, <blickdick.com>, Transfer

The Disputed Domain Name, <blickdick.com> is confusingly similar to Complainant’s mark as Respondent merely reverses the order of the words in DICK BLICK and adds a .com gTLD to the end of the mark.

1800TruckWreck, LLC v. Randall MPR / Randall Marketing and Public Relations, Forum FA2404002093210, <1800truckaccident.com>, Denied

When making the assessment under this element, the Panel notes that Complainant’s registered trademark is a relatively descriptive mark, comprising the toll free number “1 800” followed by the descriptive terms “truck” and “wreck”.

Alpha Bank S.A. v. Ehren Schaiberger, WIPO D2024-0818, <alpha.fund>, 3-Member, Denied

The Panel finds that the Disputed Domain Name [alpha.fund] is confusingly similar to the Complainant’s ALPHA BANK trademarks as it reproduces the dominant element of the trademark in question, namely the term “alpha”.  In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

BFORBANK v. Obada Alzatari, CAC-UDRP-105198 (2023), <bf-bank.com>, Denied

The Complainant has stated that the names BFORBANK and BF-BANK are similar. However, this is not the case. The names are neither visually nor phonetically similar, nor are they conceptually so close that they cannot be distinguished. The concept conveyed by the “BF-BANK” is different to that of the BFORBANK.

Tencent Holdings Limited v. He Huang, Working Venture Capital Inc., WIPO DAI2023-0024, <tencent.ai>, 3-member, Transfer

The Panel finds the entirety of the mark is reproduced within and is alphanumerically identical to the SecondLevel Domain of the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.  While the Respondent suggests that the mark should be compared to the entirety of the disputed domain name, inclusive of the TLD, the TLD is typically viewed as a standard registration requirement and as such is disregarded under the first element page 5 confusing similarity test. WIPO Overview 3.0, section 1.11.  In any event, even if the TLD were to be included in the comparison exercise along with the Second-Level Domain, the Complainant’s trademark would remain fully recognizable therein and would thereby pass the test for confusing similarity.

Morgan Stanley v. James Honeygreen, Forum FA2303002035429, <ms-privatewealth.com>, Transfer

The disputed domain name consists the term MS, a common acronym for Complainant’s business name Morgan Stanley and mark MORGAN STANLEY, a hyphen, the descriptive term “private wealth”, and the gTLD .com…Further, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) states under 1.7: “In specific limited instances, … the broader case context such as website content trading off the complainant’s reputation … may support a finding of confusing similarity.” In the instant case, the disputed domain name is used specifically to trade off Complainant’s reputation, because it is used to pass off as Complainant in emails in furtherance of a fraudulent phishing scheme. Such use provides further justification for a finding of confusing similarity to Complainant’s mark.

Fox Factory, Inc. v. Guo Xing, Forum FA2311002071285 <foxsuspensions.com>, 3-member, Transfer

Therefore, the additional word “suspensions” that appears in the Disputed Domain Name does nothing to prevent a finding of confusing similarity – and, in fact, may actually increase confusing similarity because [c]onfusion is only heightened when the generic word added by a respondent is descriptive of a complainant’s goods or services marketed in relation to the mark.”  Media West-DMR et al. v. Phil Nagy, WIPO Case No D2005-1322.  Because Complainant’s trademarks are registered for use in connection with vehicle suspensions, the panel finds that Complainant has proven the first element of the Policy.

Microtech Knives, Inc. v. Wachira Chaina / Natty?s Store, Forum FA2310002065667, <nattyoutdoorstore.com>,  Denied, RDNH

Complainant alleges that the disputed domain name <nattyoutdoorstore.com> is confusingly similar to its registered marks ANTHONY L MARFIONE and OUTBREAK. It is not… Complainant’s assertion that the disputed domain name <nattyoutdoorstore.com> is confusingly similar to its ANTHONY L MARFIONE mark does not pass even a straight-face test, and its assertion that the domain name is confusingly similar to OUTBREAK is not much better.

BOURSORAMA SA v. BRS, CAC-UDRP-103657 (2021), <brs.contact>, Transfer

The Panel takes the view that the threshold required by the First Element of the Policy is met. As a matter of fact the element “BRS” could indeed be considered as an abbreviation of the BOURSORAMA trademark as confirmed also by the registration and use by the Complainant of domain names composed by BRS (see – <brsimg.com>; < brsourama.com >; < brsp.app >). The Panel considers of relevance also the way the disputed domain name is used. The Complainant has submitted evidence that the Respondent used <brs.contact> to impersonate itself as the Complainant

One Freelance Limited v. TrafficTerminal, CAC-UDRP-102537 (2019), <affordablepapers4u.com>, Denied

In the Panel’s view, the scope of the concept of “confusing similarity” (not a mere “similarity) must be taken into account… Internet user’s are aware of the fact that the term “AFFORDABLE PAPERS” is legitimately and commonly used by various subjects on the Internet, both as a part of domain names or within Internet content (e.g. on websites, etc.) and, therefore, that they do not associate this term solely with the Complainant or its business…The Panel believes that for a domain name to be regarded as confusingly similar to the Complainant’s trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the Complainant and/or its services. As it follows from the above, this is not the case.

Digest Commentary

  • Digest Vol 4.23 <opns.domains>, Denied
  • Digest Vol. 4.17 <smartcontracts.com>, Transfer
  • Digest Vol. 4.15 <wynncruelty.com>, Denied
  • Digest Vol. 4.5 <knp376.com>, Denied, RDNH
  • Digest Vol. 3.49 <jodii.com>, Denied, RDNH
  • Digest Vol. 3.44 <nattyoutdoorstore.com>, Denied
  • Digest Vol. 3.40 <mountainsmoky.com>, Transfer
  • Digest Vol. 3.32 <fuck3cx.com>, Denied
  • Digest Vol. 3.25 <xpornonly.com>, Denied
  • Digest Vol. 3.24 <paihvesshop.com>, Denied
  • Digest Vol. 3.5 <colombiancoffee.com>, Denied
  • Digest Vol. 2.37 <kiltandkilts.com>, Denied