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When ‘Confusing Similarity’ in UDRP Cases Gets Confusing

The first element of the Uniform Domain Name Dispute Resolution Policy (UDRP) requires a complainant to prove that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” It’s unusual for a complainant to fail on this first of three prongs, but one recent case demonstrates just how uncertain the UDRP can be sometimes.

‘A Standing Requirement’

The first UDRP element has been called nothing more than “a standing requirement” by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. Once a complainant has established that it actually has rights in a trademark, proving that the disputed domain name is “identical or confusingly similar” to that trademark is usually straightforward.

Indeed, numerous UDRP decisions have said that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” The WIPO Overview elaborates the majority position this way:

The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms… typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.

In other words, so long as a disputed domain name contains the complainant’s trademark, a UDRP panel will typically find that the domain name is confusingly similar to the trademark, even if the domain name contains additional words.

Importantly, this low threshold only means that the complainant has succeeded on the first of three elements. The complainant still must prove the second and third UDRP elements: that the domain name registrant has “no rights or legitimate interests in respect of the domain name” and that the domain name “has been registered and is being used in bad faith.” The bad faith element, in particular, is often the most challenging hurdle.

One Little Word: The Exception of the Jaguar Land Rover Decision

Like all rules, of course, the first UDRP element has exceptions. One of them appeared, albeit with little explanation, in a dispute over the domain name <rangeroverchauffeur.com> that was filed—and lost—by Jaguar Land Rover Limited, the car company.

According to the decision at the Forum, Jaguar Land Rover Limited is “a globally renowned manufacturer of premium automobiles and sport utility vehicles” that has “has produced and sold vehicle models under the Range Rover® brand” since at least 1970. The disputed domain name, <rangeroverchauffeur.com>, was used by the registrant as part of its “independent chauffeur service.”

While the case presented an interesting issue as to whether the domain name registrant had rights or legitimate interests in the disputed domain and whether the domain name was registered and used in bad faith, the case effectively ended at the first element of the UDRP.

In finding against Jaguar Land Rover Limited on the first UDRP element, the panel wrote: “Complainant is not in the business of being a chauffeur. Complainant’s marks are only for land motor vehicles and parts thereof. The addition of ANY word to Complainant’s mark does not automatically create confusing similarity.”

(Interestingly, the domain name registrant prevailed despite its failure to even file a response. This is what I have written about before as “an embarrassing but not uncommon occurrence.”)

While the panel’s decision is consistent with its own previous decision three years earlier in a dispute over the domain name <mountainrovers.com>, the <rangeroverchauffeur.com> decision appears to be even more of an outlier. While Jaguar Land Rover Limited might not provide chauffeur services, it seems undeniable that chauffeur services are closely associated with Jaguar Land Rover Limited’s product, that is, automobiles. (One dictionary definition says a “chauffer” is “a person whose job is to drive people around in a car.”)

One Little Word: More About the Rule, Not the Exception

Many other UDRP decisions have said that “when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity.” For example, in the decision from which the previous quote was taken, the domain name <yellowroadway.com> was found to be confusingly similar to the trademark YELLOW despite the addition of the word “roadway,” because YELLOW was used in connection with “common carrier freight services and related business activities ” and the word “roadway” “points toward, not away from, [those] services.”

Under the <yellowroadway.com> decision and others like it, as reinforced by the WIPO Overview (which panels at other UDRP service providers, including the Forum, often cite), it seems unusual that the panel in the <rangeroverchauffeur.com> case did not find the domain name confusingly similar to the RANGE ROVER trademark.

Interestingly, the panel in the <rangeroverchauffeur.com> also found that the complainant failed to prove the second and third elements of the UDRP, so its conclusion on the first element was not necessary in reaching its decision to deny a transfer of the domain name.

Lessons Learned

The <rangeroverchauffeur.com> decision may be a striking exception to the general rule about confusing similarity, but it is important because it offers lessons for both trademark owners and domain name registrants. Trademark owners should learn that no UDRP case can be taken for granted, which is why I always include extensive factual and legal arguments in my clients’ complaints, even on what seem to be straightforward issues. And domain name registrants should learn that even a strong trademark in a domain name does not always result in a transfer because sometimes unusual decisions are decided in favor of domain name registrants.

By Doug Isenberg, Attorney & Founder of The GigaLaw Firm

Learn more by visiting The GigaLaw Firm website. Doug Isenberg also maintains a blog here.

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Nominative fair use Gerald M. Levine  –  Oct 14, 2016 12:20 AM

Puzzling in not finding confusing similarity and totally unnecessary (as you say) but interesting analysis on nominative fair use. The Ninth Circuit decision in Toyota v.Tabari could have been cited as directly on point.

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