An essential element of any domain name dispute is whether the domain name bears some important resemblance to a relevant trademark. The Uniform Domain Name Dispute Resolution Policy (UDRP) refers to this as the “identical or confusingly similar” test.
In many cases, a disputed domain name actually contains the trademark, and in other cases it may contain a typographical variation of the trademark (such as by omitting a single letter; transposing two letters; or substituting one letter for another, often adjacent to it on a keyboard).
Yet in other cases, a disputed domain name may simply look like the trademark at issue, even if the domain name doesn’t contain the trademark or fall into any of the popular cybersquatting tricks described above. I refer to these simply as “look-alike domain names.”
‘Visually Perceived as One Letter’
Here’s a recent example: the domain name <mediurn.com>.
Look closely. Did you see the word “medium”? If so, look again. The domain name does not contain the letter “m” at the end but instead contains the letters “r” and “n” which together look like the letter “m”!
This is not a hypothetical situation but instead arose in a real UDRP dispute.
The UDRP complaint was filed by the popular online publishing platform Medium Corporation, which owns a trademark registration for the word MEDIUM and uses the domain name <medium.com>. Medium Corporation was developed by Twitter co-founder Evan Williams and launched in 2012. Its registration for the MEDIUM trademark was issued in 2016.
According to the decision, the disputed domain name <mediurn.com> (with the letters “r” and “n”) was registered in 2018 and was used in connection with a “landing page of which contains a fraudulent offer of a distribution (commonly known as an ‘airdrop’) of Ethereum (cryptocurrency) with a high rate of return.” (For more on how cybersquatters are using domain names in connection with cryptocurrency, see my earlier blog post, “Bitcoin Domain Names Become Popular – And Attract Disputes.”)
In its UDRP complaint, Medium Corporation argued that the domain name was “virtually identical to its famous MEDIUM Trademark and that the mere alteration of ‘medium’ to ‘mediurn’ does not alleviate any similarity between the Disputed Domain Name and the Complainant’s MEDIUM Trademark.” The UDRP panelist agreed, writing:
The Disputed Domain Name resembles the Complainant’s registered MEDIUM Trademark; only the last letter “m” has been changed to two letters “r” and “n”. It is relevant to note for purposes of its assessment that the letters “rn” standing side-by-side may be visually perceived as one letter “m”. The Disputed Domain Name is a plain example of “typosquatting” when the spelling of a trademark has been minimally changed by the substitution of two letters. In fact it seems as if the Respondent intentionally chose these two letters for confusing similarity with the Complainant’s MEDIUM Trademark and consequently – for deception of Internet users….
The Panel finds that replacement of one letter by two letters in this case is insufficient to distinguish the Disputed Domain Name from the Complainant’s Trademark.
These look-alike domain name disputes are similar in many ways to those that include internationalized domain names (IDNs). As I wrote in a previous blog post, panelists have found that these domain names often contain “imperceptible” differences with the relevant trademarks, such as <ıĸea.com> instead of <ikea.com>. (See “How Internationalized Domain Names Affect Domain Name Disputes.”)
More Examples
A few other real examples of look-alike domain names that have resulted in UDRP disputes:
<wa1mart.com> (with a numeral “1” instead of the letter “l”): The panel rejected the cybersquatter’s argument that the domain name was not confusingly similar to the WAL-MART trademark because the letter “l” and the numeral “1” are at opposite ends of the keyboard. In ordering the domain name transferred to Wal-Mart Stores, Inc., the panel “on a direct comparison finds that the domain name is confusingly similar to Complainant’s WAL-MART trademark.”
<c0merica.com> (with a numeral “0” instead of the letter “o”): In ordering a transfer of this domain name to Comerica Bank, the panel said that “the disputed domain name is basically identical to the COMERICA trademark” and that the character substitution “confirms the fact that the disputed domain name is confusingly similar to the COMERICA trademarks.”
<linkedlnjobs.com> (with a letter “l” instead of a letter “i”): The UDRP panel wrote that “the similar visual appearance between both letters” did nothing to prevent a finding of confusing similarity between the domain name and the LINKEDIN trademark. (Disclosure: I represented LinkedIn in this case.)
Why It Matters
In the case of both look-alike and confusing IDN cases, cybersquatters may use (and sometimes actually do use) these domain names to trick Internet users in phishing scams, for example, by including links in emails that appear to be legitimate when in fact they lead to websites outside the control of the appropriate trademark owners.
