WIPO's newest overview of the Uniform Domain Name Dispute Resolution Policy (UDRP) succinctly states what decisions have made clear through the years: The UDRP's first test is only a "standing requirement."
Standing, under the law, simply means that a person or company is qualified to assert a legal right. It does not mean or imply that one will necessarily prevail on any claims.
The UDRP includes a well-known three-part test that all trademark owners must satisfy to prevail, but the first element has a low threshold. Specifically, that test requires a complainant to establish that the disputed "domain name is identical or confusingly similar to a trademark or service mark in which [it] has rights."
The 'Entirety of a Trademark'
UDRP decisions sometimes contain lengthy discussions about whether the "confusingly similar" test has been satisfied, but WIPO Overview 3.0 indicates that the analysis is really quite simple:
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name.
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....
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. [Emphasis added]
This summary doesn't differ dramatically from the previous version of WIPO's overview, which stated that the first test serves "essentially as a standing requirement." But the reference to a domain name containing the "entirety of a trademark" is new.
The WIPO overview "summarize[s] consensus panel views," so it is often seen as an important authority on substantive and procedural issues under the UDRP. Therefore, the references to the "entirety of a trademark" must be taken seriously.
'Subsumed Within' a Phrase
Because the confusing similarity test is only a standing requirement under the UDRP, trademark owners should have little difficulty (in appropriate cases, of course) convincing a panel that this element has been satisfied.
For example, in finding the domain name <richarddunhill.com> confusingly similar to the trademark DUNHILL, the panel rejected the respondent's argument that it "does not use the word DUNHILL standing alone but with the preceding word 'richard'," which "is distinctive and distinguishing." In finding confusing similarity, the panel said that the threshold imposed by the UDRP's first element "is conventionally modest, requiring an objective assessment of whether, for example, the trademark is clearly recognizable in the disputed domain name, even in the presence of additional words or strings."
Interestingly, the new WIPO overview deleted from the previous version a reference to a hypothetical example in which a domain name might not be confusingly similar to a trademark. The old overview said: "While each case must be judged on its own merits, circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (e.g., trademark HEAT within domain name theatre.com)."
One reading of this deletion is that a domain name containing a trademark is indeed confusingly similar even if the trademark is "contained or subsumed within another common term or phrase in the domain name" — an indication that the threshold for the first test under the UDRP is quite low.
Of course, a trademark owner's success on the first element of the UDRP does not determine the outcome of the case. Instead, as the WIPO overview makes clear, "Panels view the first element as a threshold test concerning a trademark owner's standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements."
Written by Doug Isenberg, Attorney & Founder of The GigaLaw Firm