How to determine the trademark of the right holder in domain name dispute arbitration

The Uniform Domain Name Dispute Resolution Policy (UDRP) is a substantive rule used in international top-level domain name dispute arbitration procedures.

According to the policy, a complaint must meet three requirements at the same time to obtain the support of the expert group: the first requirement is that the disputed domain name is identical or confusingly similar to the trademark or service mark to which the complainant has rights; the second requirement is that the respondent has no rights or legitimate interests in the disputed domain name; and the third requirement is that the respondent has malicious intent in registering and using the disputed domain name. So how to judge the "identical or confusingly similar" in the first requirement, and what is the judgment standard? Can the content of the website resolved by the disputed domain name be considered as a factor? Below, the author summarizes the opinions of the relevant expert group and evaluates relevant typical cases to facilitate colleagues or domain name practitioners to understand this standard.

1. What is the standard for determining whether a domain is identical or confusingly similar? Can the content of the disputed domain name resolution website be considered as a factor?

The first basic requirement for a complainant to obtain support for a complaint in the UDRP procedure is that the standard for determining confusing similarity involves comparing the trademark with the domain name itself to determine whether there is a possibility of causing confusion among Internet users. In order to meet this standard, the relevant trademark should usually be recognizable in a domain name, and the addition of common words, professional terms, descriptive words or negative terms is not enough to affect the judgment of such confusing similarity. The judgment of confusing similarity in the UDRP rules usually includes a direct comparison of the sound or shape of the trademark and the domain name that uses both numbers and letters. Although each specific case needs to be judged based on the specific case, there are also some special circumstances, such as when the trademark is equivalent to a common word or phrase, and itself contains or is contained in a common term or phrase, and thus is not recognizable in the disputed domain name, such as the trademark "HEAT" and the disputed domain name is "theatre.com".

However, some experts specifically require that the risk of confusion and misidentification must exist in order to determine that the disputed domain name is confusingly similar to the complainant's trademark, that is, Internet users mistakenly believe that there is a real connection between the disputed domain name and the complainant and its goods or services. Experts who hold this view usually evaluate this risk of confusion and misidentification based on the following factors: the overall impression given by the disputed domain name; the distinctive value of the terms, letters or numbers in the disputed domain name to the trademark to which it is attached; and whether Internet users who are not familiar with the meaning of the disputed domain name will necessarily understand the distinctive value of the disputed domain name relative to the trademark when searching for the complainant's goods or services.

The top-level domain suffix in the domain name, such as .com, is usually not a factor in determining whether it is confusingly similar, because the top-level domain suffix is a technical requirement for domain name registration, that is, this part is not identifiable and does not need to be considered when determining whether it is identical or confusingly similar. Of course, there are some exceptions. In some special cases, the top-level domain suffix itself may be a component of the trademark. Although the website content may need to be examined to determine whether there is intentional confusion when evaluating the other two elements of the UDRP (i.e., whether the respondent has rights or legitimate interests in the disputed domain name, and whether the registration and use of the disputed domain name is malicious), the website content (whether it is similar or different from the business scope of the trademark owner) is usually not considered in evaluating whether it constitutes confusing similarity as required by the first element of the UDRP.

2. Analysis of relevant typical cases

1. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No.D2000-1698

This is a ruling made by the World Intellectual Property Organization Panel (WIPO). In this case, the disputed domain name is, and the complainant owns the registered trademark GUINNESS. In its defense against the first element of the UDRP, the respondent (domain name holder) stated that the disputed domain name resolution website did not sell the same or similar goods as the complainant in the complainant's area, and did not infringe the complainant's trademark rights. Therefore, the disputed domain name is not the same as the complainant's trademark and does not constitute confusing similarity. In response to this defense, the panel pointed out that the domain name itself and the website it resolves are two different things, and the use of the website does not affect the question of whether the domain name is confusingly similar to the trademark, because when Internet users log in to a website, they are already confused by the similarity between the domain name and the complainant's trademark, and mistakenly believe that they have logged into the complainant's website. Obviously, the experts believe that when judging whether the domain name and the complainant's trademark are identical or confusingly similar, it is not necessary to consider the specific content of the website resolved by the disputed domain name, that is, the specific use of the disputed domain name by the respondent, but only to compare the sound, shape, meaning and overall impression of the constituent elements of the domain name and the trademark itself.

2. America Online, Inc. v. JohuathanInvestments, Inc., and AOLLNEWS.COM, WIPO Case No. D2001-0918

Similarly, this case was also decided by the World Intellectual Property Organization Panel. The case involved two disputed domain names, the first being < aollnews>, and the second being that the trademark rights claimed by the complainant in this case were "AOL" and "NETSCAPE", and the respondent did not respond. The panel considered that the first domain name < aollnews> was confusingly similar to the complainant's trademark "AOL", but as to whether the second domain name was identical to or confusingly similar to the complainant's trademark "NETCAPE", the panel considered that the disputed domain name added a hostile and defamatory word "FUCK" before the complainant's trademark, and it was difficult to imagine that Internet users would associate this domain name with the complainant's highly reputable trademark "NETSCAPE". Therefore, the two domain names were not identical and would not be confusingly similar. Therefore, the complainant's first complaint request could not be satisfied, and the final ruling was that the domain name would not be transferred and would continue to be held by the respondent.

3. VIP ME Enterprises LLC Limited LiabilityCompany Nevada v. Frank Ma / Vipshop (US) Inc. FORUM Case No: FA1611001702016

This case was decided by the panel of the National Arbitration Court of the United States. The disputed domain name was, and the complainant's service mark was "VIPME", which was approved for registration by the US Patent and Trademark Office in 2014. In response to the first requirement of UDRP, the respondent argued that he and the complainant used the trademark in different forms in different categories of goods or services, so the disputed domain name is not identical to the complainant's trademark and does not constitute confusing similarity. In this regard, the panel believes that even if the respondent and the complainant use the mark in different forms in different categories of goods or services, the specific form of use of the disputed domain name is not a factor considered in the first requirement of UDRP, so the panel finally believes that the disputed domain name is confusingly similar to the complainant's trademark.

III. Summary

In the arbitration procedure of domain name disputes, the respondent's defense that it does not constitute infringement because of its prior rights is not effective. The first requirement stipulated in UDRP (Uniform Domain Name Dispute Resolution Policy) does not need to be based on infringement. On the contrary, the basic facts required by the first requirement of UDRP only focus on whether the domain name itself is identical to the right holder's trademark in sound, shape, meaning and overall impression or constitutes confusing similarity. Generally, the panel applies a relatively low standard to the confusing similarity required by the first element of the UDRP. After determining that the disputed domain name is sufficiently similar to the complainant's trademark, it will continue to examine the other two elements required by the UDRP.