Cybersquatters sometimes use domain names that look like trademarks — for example, by using two letter v's in place of the letter w; the letters r and n instead of the letter m; or the number 0 instead of the letter o. In this video, I discuss three recent cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) in which trademark owners filed — and won — complaints for these so-called homoglyphs, or lookalike domain names.
The three UDRP decisions involve the following domain names:
<harryvvinston.com>, which looks like it contains the HARRY WINSTON trademark owned bv the company that uses it in connection with jewelry;
<crnegroups.com>, which looks like it contains the CME trademark trademark owned by the Chicago Mercantile Exchange; and
<halliburt0n.com>, which looks it contains the HALLIBURTON trademark owned by the energy services company.
Fortunately for the relevant trademark owners, as I discuss in the video, UDRP panels easily understood exactly what the cybersquatters were doing in these cases.
The issue arises under the first element of the UDRP’s three-part test, which requires a trademark owner filing a complaint to prove that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which [it] has rights.” As the WIPO Overview says, “This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”
As the UDRP panel wrote in the HARRY WINSTON decision:
In this case, the disputed domain name looks like the HARRY WINSTON mark…. This similarity in appearance is sufficient to convince the Panel that the Complainants have satisfied the first element of the UDRP.
Cybersquatters can use the confusion created by these lookalike domain names to their advantage, such as by engaging in phishing activities, as apparently happened in the CME case. This seems to be a part of a growing number of business email compromise scams — something happening to more and more of my clients that are being targeted by this type of cybersquatting activity.
But this type of deception – using domain names that look like trademarks by replacing one or more characters with those that are visually similar – is not a new tactic for cybersquatters. It’s just that these recent decisions are an important reminder for trademark owners to be on the lookout for lookalikes – and to consider using the UDRP process to eliminate them.
