In episode number 6 of my YouTube masterclass on Domain Name Disputes, I discuss the "identical or confusingly similar" requirement of the first part of the three-part test under the Uniform Domain Name Dispute Resolution Policy (UDRP). This requires a complainant to prove that the domain name at issue is identical or confusingly similar to a trademark or service mark in which it has rights.
You can watch the video below or on the GigaLaw YouTube channel.
As I explain in the video, in some cases, the comparison is pretty straightforward, but in other cases it can become a bit challenging, such as when a domain name contains a trademark plus another word or when it consists of a typographical variation of a trademark or when a cybersquatter has employed other tricks.
Specifically, I discuss:
The role of the top-level domain (TLD)
The impact of new gTLDs
The definition of “confusing similarity”
Domain names that contain a trademark plus another word
Domain names that contain a typographical variation of a trademark (“typosquatting”)
Domain names that contain a shortened or abbreviated form of a trademark
The impact of negative words (such as “sucks”) in domain names
Cybersquatting tricks such as adding “www” to the beginning of a domain name, or substituting similar-looking letters
Unfortunately for trademark owners, there’s a nearly endless number of domain name variations that cybersquatters can create. Indeed, I’m never surprised by the tactics that cybersquatters use. But, the good news is that with the right legal arguments, establishing confusing similarity under the first element of the UDRP is the first step for a trademark owner to reclaim its rights.
To watch previous episodes, visit “Domain Name Disputes: A Masterclass by Doug Isenberg” on YouTube.
