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Last updated: August 2003

DIVISION 2: Trademarks

Amy Bender (Harvard Law School '03)

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CHAPTER 2.1 - Marks in Which the Complainant Has Rights

a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "Complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that (…)

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (…)

In the administrative proceeding, the Complainant must prove that each of these three elements is present.

UDRP Paragraph 4(a)(i)


Section - Federally Registered Marks

Federal registration of a mark is prime facie evidence of Complainant's rights in the mark.


The USPTO Supplemental Register is for marks that are descriptive but which have not acquired secondary meaning.

Reporter's Notes:

Registration of a service mark with the US Patent and Trademark Office: NAF/FA133759 (

Registration of a trademark with the US Patent and Trademark Office: WIPO/D2002-1039 (

However, registration in the Supplemental Register is not sufficient: WIPO/D2002-1103 ( - had Complainant also shown secondary meaning in addition to registration in the Supplemental Register, that might have been sufficient).

Registration in the Supplemental Register might even prove that no rights existed at the time of registration: WIPO/DBIZ2002-0167 (

Section - Foreign Registered Marks

Foreign registrations of marks can establish Complainant's rights in a mark.

Reporter's Notes:

Registration in New Zealand was sufficient: WIPO/D2002-0087 (

Rights based on registrations in Spain and Colombia: WIPO/D2001-0632 (

Rights based on US and foreign registrations: WIPO/D2001-1015 (

Section - State Registered Marks

State registration may establish Complainant's rights in a mark, especially where the parties are from the same geographic area or where the mark has acquired secondary meaning beyond the original state.

Reporter's Notes:

State registration sufficient if Respondent is from the same state: WIPO/D2000-0056 (

Complainant held marks registered in Arizona, where both parties did business, even with each other: NAF/FA94359 (

Complainant held a mark in Florida and Respondent was from Tennessee, but the Panel emphasized that the mark had acquired secondary meaning outside of Florida by virtue of Complainant's internet business and pointed to a pending federal trademark application: NAF/FA95164 (

Registration in Pennsylvania was sufficient even though Respondent was headquartered in Colorado: DeC/AF-144 ( and

Rights based on registration in Washington state: NAF/FA123893 (

Section - Pending Applications

Pending trademark or service mark applications can be used to help establish rights in a mark.


There is currently division as to whether pending applications, without more, establish rights in a mark.

Reporter's Notes:

Pending service mark application: WIPO/D2000-0040 (

Pending trademark application:WIPO/D2000-0131 ( - finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).

But see: Pending applications, without more, do not prove rights in a mark: WIPO/D2001-0798 (


Section - Unregistered Marks

Panels may accept unregistered marks as basis for Complainant's rights in a mark, although the level and type of proof varies.


Panelists from non-common law systems may require registration of the mark in order to establish rights in the mark.

Reporter's Notes:

Common law trademarks have been held by to represent sufficient 'rights' to have standing under the UDRP. See WIPO/D2000-0050 (noting that the Policy 'does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names' and applying the Policy to 'unregistered trademarks and service marks'); NAF/FA97044 (finding that the Uniform Domain Name Dispute Resolution Policy does not require 'that a trademark be registered by a governmental authority for such rights to exist').

Continuous Use - Panel found that the Policy is broad enough to encompass rights in unregistered trademarks or service marks, citing McCarthy on Trademarks and Unfair Competition, 25:74.2, Vol. 4 (2000); thus Complainant's proof of continuous use of the mark in relation to the sale and marketing of its products was sufficient to create rights in the mark even though it was not registered: NAF/FA135597 ( [Numerous decisions cite this section of McCarthy]. Complainant established sufficient rights in its common law mark through continuous use: WIPO/D2002-0912 (

Secondary Meaning - Complainant must show that the unregistered mark has achieved secondary meaning or association with Complainant: WIPO/D2002-0786 (; WIPO/D2002-0726 (

Generic terms can never function as trademarks, and no amount of secondary meaning can convert a generic term into a trademark: WIPO/D2000-0439 (finding SHOPPING.COM to be generic despite proof of extensive advertising and marketing efforts and thus holding that Complainant did not have rights in the alleged mark); WIPO/D2000-0463 (finding FREEPRESSCLASSIFIED.COM to be generic).

The Panel suggested that the following factors might be helpful in proving rights where the mark is not registered: prominent usage of the designations on the respective webpages; evidence of the use of the designations in other hard copy publications so as to indicate that the goods or services referred to in these publications are provided under that designation; evidence of the use of these designations on specific goods provided by the Complainant; evidence of the volume and extent of such uses: WIPO/D2002-0981 (,,,,,,, and

If the Complainant can show that its common law mark has become distinctive through use in any country, it will be accepted that it has rights to satisfy the first requirement in these proceedings: WIPO/D2002-0815 (

See also: WIPO/D2000-0754 (finding two of three claimed marks not proven to be common law marks based on the materials submitted); WIPO/D2002-0143 ( and - finding Complainant had no protectable rights in the generic Charter Fleet but had rights in Charter Fleet International - although it was merely a descriptive mark, continuous use for 5 years had made it sufficiently distinctive).

Section - Celebrity Names

Panels generally find rights in the names of well-known individuals and celebrities, based on having trademarked the name or through common law trademark protection.


The Report of the Second WIPO Internet Domain Name Process (September 3, 2001) specifically addressed personal/celebrity names. It states, "The UDRP does not require that a Complainant must hold rights specifically in a registered trademark or service mark. Instead, it provides only that there must be 'a trademark or service mark in which the Complainant has rights,' without specifying how these rights are acquired": WIPO, Second Process Report, para. 182.

While prior decisions sometimes relied solely on the fame of the celebrity, more recent Panels, citing the Second Process Report, require proof that the name has been used to identify the celebrity's products or services.

Reporter's Notes:

Cases where a well-known individual had registered their name as a trademark: WIPO/D2000-0060 (, name registered as a Community Trade Mark); NAF/FA94866 (, misspelling of Anne Geddes, registered trademarks); NAF/FA94644 (, one trademark registration for name); NAF/FA94373 (, several trademark registrations); NAF/FA95063 (, ''international musical superstar''); WIPO/D2000-0364 (, internationally known musician).

"To establish common law rights in a personal name, it is necessary to show use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source. Upon such proof, a celebrity's name can serve as a trademark when used to identify the celebrity's performance services": WIPO/D2002-0872 ( - finding that Complainant had, through use, acquired common law trademark rights in his name).

Cases where Panels found that individuals have trademark rights even where their names are not registered as trademarks: NAF/FA97112 (, ''her fame as a supermodel and actress evidences a reputation worthy of protection under common law trademark laws''); NAF/FA95465 (, author of books and articles on business and marketing); WIPO/D2000-0402 (, high profile investment banker); WIPO/D2000-0235 (,.net, well-known British author); WIPO/D2000-0229 (, famous Korean pop music artist); WIPO/D2000-0210 (, famous American actress); NAF/FA95261 (, famous American singer); NAF/FA95110 (, "internationally known actress, model, public speaker, and feature entertainer'"); DEC/AF-303 (,, senior Canadian government official).

But See:
Panel ruled that famous performer Sting did not necessarily have rights in STING "as a trademark or service mark" because the personal name Sting was "also a common word in the English language, with a number of different meanings." WIPO/D2000-0596 (

Panel majority refused to transfer to recording artist Bruce Springsteen. The Panel reasoned that Internet users would know that the site was not an official/authorized site and that Respondent used the domain name in connection with a bona fide offering of goods and services. The Panel found that Respondent did not register the domain name to prevent the trademark owner from using the mark in a domain name. Since Complainant had registered as his official web site, the Panel found that Respondent did not prevent Complainant from using its mark in a domain name. The Panel also criticized other celebrity name cases. It felt that Panels fail to grasp that "users of the Internet do not expect all sites bearing the name of celebrities or famous historical figures or politicians, to be authorised or in some way connected with the figure themselves." WIPO/D2000-1532 (

Section - Other Personal Names

Panels are less likely to transfer the domain where the domain is a personal name that is not well-known, absent evidence that the name was used commercially and had acquired secondary meaning.


As stated in the comments in the previous section, WIPO carefully considered to what degree protection should be extended to personal names, in its Final Report on the Second WIPO Domain Name Process, dated September 3, 2001. In its recommendations, WIPO clearly indicated that the Policy should be limited to personal names that had been used commercially.

Reporter's Notes:

"A mark comprising a personal name has acquired secondary meaning if a substantial segment of the public understand the designation, when used in connection with services or a business, not as a personal name, but as referring to a particular source or organization." Since the Complainant did not prove that the name met this criteria, the Panel declined to find rights in the alleged mark: WIPO/D2001-0540 (,, [This case has a great summary of personal and celebrity name cases].

Panel found that Complainant held a common law mark in his name in connection with horse training: WIPO/D2000-0299 (

Panel denied to transfer the domain to Marvin Lundy. Lundy claimed his named was distinctive and that he was a well-known attorney in Philadelphia (Respondent is also from Philadelphia). "It is a basic rule of service mark law in the United States that personal names (combining a first name and surname) are not considered inherently distinctive. In order to establish common law service mark rights in a personal name, it is necessary to show that the name has acquired secondary meaning among consumers in the relevant market; that is, to show that consumers associate the name with a specific provider of services." "Complainant has provided no information or materials that support its assertion, such as published news reports, survey responses, evidence of advertising, or other materials that might establish at least a prima facie case in support of its assertion." WIPO/D2001-1327.

Section - Trade Names

A trade name will satisfy 4(a)(i) if it is registered as a trademark and might satisfy 4(a)(i) if it qualifies as a common law mark.


Panels are divided as to whether trade names qualify as a mark under 4(a)(i).

Reporter's Notes:

Complainant failed to prove that it had rights in its trade name because it did not present evidence of secondary source identification or extensive use of the name in relation to the specified product; mere incorporation is insufficient: NAF/FA137713 (

Complainant had rights in its trade name due to continuous and exclusive use since the 1970s: WIPO/D2002-0912 (

But see:

Complainant's trade name was not sufficient because Complainant had not registered it or even proven common law rights in the name. "The reports and descriptions of the purpose of the UDRP make clear that these rules are intended only to protect trademarks, registered or common law, and not mere trade names, due to the fact that trade names are not universally protected as are trademarks": NAF/FA118308 (

No reference is made in the Policy and Rules to trade names in which a Complainant has rights: WIPO/D2000-0025 ( and

Section - Geographical Names

A geographical name will satisfy 4(a)(i) if it is registered as a trademark and might satisfy 4(a)(i) if it performs functions similar to a registered trademark.

Reporter's Notes:

Registered Marks:

Although WIPO/D2000-0505 ( and WIPO/D2000-0617 (; both of which concerned registered trademarks, came out differently in the end, the Panels in both instances found that because the geographic names were registered trademarks, Complainants had at least proved rights in the marks under 4(a)(i).

Unregistered Marks:

"The Administrative Panel takes definite exception to the Complainant’s view that rights to a unique geographical name should, evidently as a matter of principle, "be regarded to belong to the owner of the geographical area in question". However, applying by analogy relevant parts of the European Court’s interpretation to evidence introduced by the Complainant, the Administrative Panel concludes that the Port of Hamina has acquired distinctiveness and become established in the meaning of the [European Union] Trademarks Act as a trademark/service mark relating to services originating from the City of Hamina/Port of Hamina. Consequently, Port of Hamina is a trademark/service mark to which the Complainant has rights": WIPO/D2001-0001 (

"The Panel cannot agree with the contention that a unique geographical name should be considered as belonging to the legal authority of the geographical area in question under the Policy. In view [...] of the fact that no market research or similar evidence has been submitted by Complainant to prove establishment on the market in the sense of the trademark law, the Panel cannot make a finding that trademark rights exist in the denomination 'Port of Helsinki'": WIPO/D2001-0002 (

"Unless the evidence demonstrates that the name of a geographical location is in fact performing the function of a trademark, such a name should not be considered a trademark for the purposes of the Uniform Policy": WIPO/D2001-0047 (

Section - Complainant's Domain Name

Panels have read 4(a)(i) to include rights in Complainant's domain name where the domain name functions as a common law trademark.


While earlier cases stated that the Policy does not refer to identity or confusing similarity between Complainant's and Respondent's domain names, the trend towards expanding the Policy to include various types of unregistered common law marks has meant that Panels are also more willing to find rights in a domain name that functions a common law mark.

Reporter's Notes:

If a domain name has accumulated a great deal of goodwill via a popular website, and is used to sell products or services and identify their source or advertise these products and services, then the domain name would at least have achieved the status of a common law trademark and thus ought to be considered a protectable right under the Policy: WIPO/D2001-1103 (

But see:

Popularity of a website is not, by itself, enough to confer rights under 4(a)(i) of the Policy: WIPO/D2001-1106 (

Section - Patent Rights

Panels have read 4(a)(i) to include patent rights.

Reporter's Notes:

Panel found that Complainant had exclusive right to market pharmaceutical products containing telmisartan and meloxican by virtue of its patents and FDA "new chemical entity" rules; thus, Complainant had established sufficient rights under 4(a)(i): NAF/FA95011 ( and ); WIPO/D2000-0266 ( found to be a common law mark in use by Complainant; Panel detailed various uses of "" as a mark in commerce); .

Section - Radio Call Letters

Panels have read 4(a)(i) to include a radio station's call letters, where the call letters have been used in a trademark sense.

Reporter's Notes:

Broadcasting call letters can serve as trademarks, if they are used in a trademark sense: WIPO/D2000-0257 (WAVYTV.COM, WAVY-TV.COM, WAVYTV10.COM, and WAVY-TV10.COM).


Section - Owners

A Complainant has sufficient rights in marks that it owns to bring a Complaint under the Policy.

Reporter's Notes:

See, e.g., NAF/FA133759 ( - service mark); WIPO/D2002-1039 ( - trademark).

Section - Licensees and Franchisees

Licensees and franchisees may also have sufficient rights for the purposes of 4(a)(i).


Where the licensee brings a complaint alone, as opposed to appearing as co-Complainant with the mark owner, Panels may require the licensee to make some showing of either exclusive licensing or the mark owner's assent to the licensee bringing an action under the Policy.

Reporter's Notes:

Owners of different marks (each of two marks identical to a disputed domain name) and a licensee (that also owned same mark in different countries) were admitted as co-Complainants: WIPO/D2000-0237 ( and

The two Complainants were owners and cross-licensees of the other Complainant's mark: WIPO/D2000-0914 (

Franchisee admitted as Complainant: NAF/FA94969 ( and

Exclusive licensees have rights in the mark: NAF/FA109053 (; WIPO/D2001-0790 (

Section - Other Parties as Co-Complainants

Panels usually allow an owner to appear as a Co-Complainant with another, closely-related party that also has some rights in the mark in question.

Reporter's Notes:

Exclusive marketing agent admitted as Co-Complainant: WIPO/D2000-0363 (

Mark owner and its sole stockholder were Co-Complainants: NAF/FA94346 (

The Panel accepted as Co-Complainants two companies of which one was acquired by the other, and whose marks had been combined in one domain name, the future trade name of the acquired company: WIPO/D2000-0619 (;;;;;; and

The Panel admitted parent and subsidiary as Co-Complainants: WIPO/D2000-0587 (36 variations of yahoo and geocities - one owned the Yahoo mark and the other owned the Geocities mark); WIPO/D2000-0523 ( - subsidiary owned the mark); WIPO/D2000-0159 (


Section - Timing of Rights in the Mark

Paragraph 4(a)(i) of the Policy requires the Complainant to have rights in a mark (registered or common law) before the disputed domain name is registered.

Reporter's Notes:

Common law rights: NAF/FA115042 (; NAF/FA103181 (; WIPO/D2001-1228 (

Trademark or service mark: WIPO/D2002-0943 (; NAF/FA135602 (

Section - Location of the Mark

The mark does not need to be registered in Respondent's country.

Reporter's Notes:

WIPO/D2000-0074 (; DEC/AF-207 (


a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "Complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that (…)

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (…)

In the administrative proceeding, the Complainant must prove that each of these three elements is present.

UDRP Paragraph 4(a)(i)


Section - Spacing

A domain name will be considered identical even where Respondent deleted spaces between the words that form Complainant's mark.

Reporter's Notes:

See, e.g., NAF/FA137221 ( - mark was "Ann Coulter"); NAF/FA140598 ( - mark was "Daddy's Junky Music").

Section - TLDs

A domain name will be considered identical where Respondent merely added a gTLD to the Complainant's mark. 

Reporter's Notes:

The gTLD .com: WIPO/D2000-0493 (finding identical to Complainant's mark POMETELLATO because the generic top-level domain (gTLD) '.com' after the name is not relevant); NAF/FA137221 ( - mark was "Ann Coulter").

Other gTLDs: NAF/FA114351 (finding that the addition of the generic top-level domain '. net' is inconsequential when conducting an 'identical' analysis -; WIPO/D2002-0760 (,,,,,,,,,,,,,; WIPO/D2002-0424 (

Section - Punctuation

A domain name will be considered identical where Respondent merely added or deleted punctuation.

Reporter's Notes:

Deleting punctuation: WIPO/D2000-0321 (finding the domain name to be identical to Complainant's CHI-CHI'S mark, despite the omission of the apostrophe and hyphen from the mark); NAF/FA140598 ( - mark was "Daddy's Junky Music").

Adding punctuation: NAF/FA125229 (mark does not become dissimilar merely by adding hyphens - mark was Dollar Rent A Car and the domain was; WIPO/D2002-0144 ( - mark was France Telecom).


Section - Is the Test Objective or Subjective?

When assessing confusing similarity, some Panels apply an objective test that looks only to the mark and the alleged approximation of the mark, while other Panels apply a subjective test which asks whether the user would be confused upon visiting the website.


Further examples of this split can be seen in the sections that follow.

Reporter's Notes:

Objective test: see, e.g., WIPO/D2000-0662 ( - "the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity"); WIPO/D2000-0109 ( - "actual confusion is irrelevant since the test is confined to a consideration of the disputed domain name and the trademarks").

Subjective test: see, e.g., WIPO/D2000-0996 ( - focusing on whether a reasonable user would be confused); WIPO/D2003-0060 ( - Panel took into account the fact that Internet users would be confused upon being directed to Complainant's site).

Section - Adding, Deleting, or Substituting Letters or Numbers

Adding, deleting, or substituting letters or will not preclude a finding of confusing similarity.

Reporter's Notes:

Deleted letter: "But for the lack of the pluralizing 's' in the domain name, it is identical to Complainant's registered marks and Complainant's domain name. Such a de minimis difference between a domain name and a trademark is insufficient to overcome a finding of 'confusing similarity.'" WIPO/2002-0835 ( See also NAF/FA94730 (eliminating "e" in; NAF/FA94737 (eliminating "t" in

Added letter: "where the only difference between the Complainant's mark and the domain name in dispute is the letter 's', there is no question that the Domain Name is confusingly similar to the Complainant's registered mark: WIPO/2002-0762 ( See also WIPO/D2000-0130 ("h" added in; WIPO/D2000-0999 (adding "a" in

Substitutions: Respondent replaced "1st" in Complainant's mark by "first": NAF/FA94788. See also WIPO/D2000-0588 ("0" instead of "o" in; NAF/FA94370 (replacing an "u" by an "o" in Exchange of "$" by "s" in Complainant's mark makes domain name confusingly similar: WIPO/D2000-0039 (

Respondent added "y" and "ies" to Complainant's mark NAF/FA94384.

Numbers: The addition of the numeral 4 as a prefix is wholly non-distinctive: WIPO/D2001-1469 (; WIPO/D2002-0415 ( - "domain names containing a combination of 1800 and the Complainant's trademark were confusingly similar to Complainant's mark."); WIPO/D2000-0664 ("2000" added to priceclub).

But See:

Added an "ing": "in light of the common use of the words 'nations' and 'banking,' this Panel fails to see how there is a likelihood of confusion between NATIONSBANK and < >.To show that there is a confusing similarity between the disputed domain name and the mark, Complainant has to show that the public would be confused between its mark and the addition of the suffix 'ing.'" NAF/FA103809 (

Section - Reversing the Words in a Mark

Reversing the words in Complainant's mark will not preclude a finding of confusing similarity.

Reporter's Notes:

NAF/FA94992 ('' confusingly similar to ''); WIPO/D2001-1075 (Panel would have found that is confusingly similar to Vintage Vespa mark; however, the Complainant merely argued that they were identical so the Panel rejected the claim); WIPO/D2002-0207 ("The domain names <> and <> are confusingly similar to the registered stylised trade mark GALA BINGO and to the unregistered 'Gala Bingo' as they are a simple reversal of the order of the words constituting the Complainant's trade mark.").

Section - Adding a Word to a Mark

Adding a word to Complainant's mark will usually not preclude a finding of confusing similarity.


Panels are even more likely to find confusing similarity where the word added relates to Complainant's business.

Reporter's Notes:

Adding a generic word: NAF/FA141825 ( and others - "it is also well-established under the Policy that a domain name composed of a trademark coupled with a generic term still is confusingly similar to the trademark"); WIPO/D2002-0367 ( - addition of the generic term, 'automotive,' does not distinguish Respondent's domain name from Complainant's mark because the domain contains Complainant's EXPERIAN® mark in its entirety); NAF/FA98071 (

Adding a word related to Complainant's business: NAF/FA129123 ( - finding confusing similarity with the THRIFTY marks, particularly since those additions have connotations that relate to Complainant's business services); NAF/FA113283 ( and others - "The addition of generic words is especially confusing where the generic words bear an obvious relationship to Complainant's business"); NAF/FA109576 ( - use of the generic term 'video' does not defeat a confusing similarity claim, because the generic term directly relates to Complainant's business, which increases the likelihood of confusion); NAF/FA93670 (

Adding a descriptive word: NAF/FA96700 ( and others - "Respondent's use of nine domain names using the DEWALT mark with a descriptive term are confusingly similar."); NAF/FA124739 ( and others).

"The addition of the suffix 'casa' does not affect the attractive power of the word Prada and the name 'pradacasa' is consequently confusingly similar to the registered trademarks Prada": WIPO/D2002-0928 (

"The addition of the term 'my' as prefix to a mark does not diffuse the confusingly similar nature between the disputed domain name and Complainant's mark. Therefore, <> is confusingly similar to Complainant's mark PC2CALL": NAF/FA103181 ("The

"sucks" cases: Panel is of the view that the addition of the suffix 'sucks' does not defeat the confusingly similar requirement of the Policy": NAF/FA102247 ( See also WIPO/D2001-0213 ( - noting that not every Internet user is well-versed in the English language); WIPO/D2000-0662 ( - finding that while consumers would not be confused a domain name is 'identical or confusingly similar' to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name).

But See:

"sucks" cases: WIPO/D2000-1015 ( and - holding that 'both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word 'sucks' or other language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark."); WIPO/D2000-1104 (holding that 'a reasonably prudent user would not mistake the site for any of Wal-Mart's official sites' and expressing doubt as to whether a domain name including 'sucks' ever can be confusingly similar to a trademark to which 'sucks' is appended.)

NAF/FA101509 ("If Complainant is really making an initial interest confusion argument, it would have to be suggesting that the public would be expecting that its distinguished moniker and service mark TRUMP would be readily associated with <>). The domain name at issue does not suggest that the Complainant is the source, origin or sponsor of Respondent's website.").

Section - Internet Related Term Added

Adding an Internet related term will not preclude a finding of confusing similarity.

Reporter's Notes:

Respondent added "e" for electronic to Complainant's mark: WIPO/D2000-0167 (,; WIPO/D2000-0420 (; WIPO/D2000-0456 (egeneticsinstitute); NAF/FA112559 ( - "Respondent Respondent's addition of a hyphenated 'e' as a prefix to the contested domain name makes the domain name confusingly similar to Complainant's mark since the addition of a letter does little to reduce confusion among Internet users; the CELEBREX mark's impact is still present.").

The addition of the 'www' prefix to Complainant's registered mark does not create a domain name that is distinct from the mark for purposes of Policy 4(a)(i) analysis: NAF/FA142319 (

WIPO/D2000-0428 ("email" and "chat" added to YAHOO); WIPO/D2000-0435 ("onlinestore" added to OLYMPIC and USOLYMPIC); WIPO/D2000-0508 ("cyber", "e-home", "online", "internet" and "e" added to SHOPPING24); WIPO/D2000-0790 ("web" added to AT(&)T).

Section - Geographical Term Added

Addition of a geographical term will not preclude a finding of confusing similarity.

Reporter's Notes:

Confusing similarity where geographical term was added to mark: WIPO/D2000-0150 ("canada"added to WALMART); WIPO/D2000-0255 ("ny" added to CBS); WIPO/D2000-0305 ("international" added to ARMANI); WIPO/D2000-0437 ("korea" added to IKEA with hyphen); WIPO/D2000-0927 ("usa" added to ALTAVISTA).

"The addition of the name of a place to a service mark, such as the addition of 'France' to 'AOL', is a common method for specifying the location of business services provided under the service mark. The addition of a place name generally does not alter the underlying mark to which it is added": WIPO/D2000-0713 (,, and

Section - TLDs

Addition of a TLD will not preclude a finding of confusing similarity.

Reporter's Notes:

Where the mark and the domain differed only by the addition of the TLD: WIPO/D2000-0418 (.com suffix); NAF/FA94372 (Net suffix); NAF/FA94446 (.org suffix).

Where the mark and the domain differed by the TLD and other minor differences: WIPO/D2000-0503 (differences were TLD and lower cases); WIPO/D2000-0626 (differences were TLD, lower cases and space).

Section - Punctuation

Changing the punctuation will not preclude a finding of confusing similarity.

Reporter's Notes:

Hyphens: "Where the only difference between a mark and a domain name is the presence of a hyphen between the prominent elements of the mark, such is not sufficient to negate confusingly similarity": NAF/FA128071 ( See also WIPO/D2000-0017 ( is confusingly similar to DRAW-TITE trademark despite lack of hyphen in domain name); WIPO/D2000-0038 (euro-tunnel.comis confusingly similar to EUROTUNNEL trademark despite lack of hyphen in domain name).

Spacing: NAF/FA112563 ( - since spaces are not permitted in domain names Respondent's omission of spaces does not mitigate the confusing similarity between the domain name and Complainant's mark); WIPO/D2000-1613 (finding the domain name confusingly similar to Complainant's MANN BROTHERS mark).

Section - Combining Marks

Combining marks will not preclude a finding of confusing similarity.

Reporter's Notes:

Confusing similarity where Respondent combined two of Complainant's marks: WIPO/D2000-1230 (

Confusing similarity found because domain name incorporated two marks of the two Complainants: WIPO/D2000-0914 (

Confusing similarity between Complainant(s)'s mark and domain name which incorporated the names and marks of two merging companies: WIPO/D2000-0446 ( and

Confusing similarity found because domain name was a combination of elements of different marks owned by Complainants: WIPO/D2000-0227 ( - the marks were "Westfield," "Shoppingtown," and "A Westfield Shoppingtown").

Section - Incomplete or Abbreviated Marks

Incorporating less than Complainant's entire mark will not preclude a finding of confusing similarity.

Reporter's Notes:

See, e.g., NAF/FA95246 ("precious metals" omitted in GOLDMASTERS PRECIOUS METALS); NAF/FA95262 ( and instead of THE GETTY and THE J. PAUL GETTY MUSUEM); NAF/FA95284 ( instead of DOCTORS FOSTER & SMITH); NAF/FA95310 ( instead of PEROT SYSTEMS); NAF/FA95399 ("w." and co." omitted in WALTER W. CRIBBINGS CO.); NAF/FA95606 ( instead of ACCESSARIZONA.COM).

But see: No confusing similarity between "Worldcup" and "" and "" because the domain name does not contain the mark and the abbreviation might mean different things apart from world cup: WIPO/D2000-0034.

Section - Design Mark or Logo

A domain name can be confusingly similar to Complainant's logo or design mark.

Reporter's Notes:

See, e.g., WIPO/D2002-0324 ( - domain name was identical to the trademark FORTUM in which the Complainant has rights and confusingly similar to the logo mark incorporating the word FORTUM to which the Complainant also has rights); WIPO/D2002-0061 ( - domain name was identical to Complainant's unregistered trademark TENGIZCHEVROIL and was confusingly similar to Complainant's registered mark in logotype form); WIPO/D2001-0932 ( - domain name is confusingly similar to the Complainant's unregistered common law logo for 'Sydney Markets'); WIPO/D2002-0253 (; WIPO/D2000-1810 (


Section - Beyond Comparing the Mark and the Domain Name

Some Panels looks beyond the mark and the domain name when assessing confusing similarity, including the use of the mark on the website, the fame of the mark, whether Complainant and Respondent operated in similar lines of business, and other factors.


On the other side, a large number of Panels have held that any analysis beyond whether the actual mark and domain name are identical or confusingly similar is inappropriate.

Reporter's Notes:

Panel took into account that Respondent used Complainant's mark on website in order to assess confusing similarity: WIPO/D2000-0187 ( and other variants); WIPO/D2000-0743 (; DEC/AF-134 (; NAF/FA95407 (; NAF/FA94944 ( and others); NAF/FA94956 (

Panel held that to assess the confusing similarity "You must judge [the marks], both by their look and by their sound. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for goods of the respective owners of the marks": WIPO/D2000-0179 ( - citing a British case).

Panel took into account that Respondent's domain name would cause confusion among ordinary Internet users or consumers: WIPO/D2000-0241 (; DEC/AF-264 (

Panel considered that the mark was famous or well-known: WIPO/D2003-0019 ( - mark was well-known); NAF/FA144628 ( - mark was famous).

The fact that emails were erroneously sent to Respondent instead of Complainant taken as proof of confusing nature of Respondent's domain name: WIPO/D2000-0573 (

Confusing similarity found in the marketplace and not by an abstract comparison of domain name and mark: DEC/AF-148 (

Confusing similarity found because Internet users typing in Complainant's name would be directed to Respondent's site: NAF/FA94962 (; NAF/FA94969 ( and; DEC/AF-153 (

Panel held that confusion was caused or at least increased by the fact that Complainant and Respondent operated within the same industry: WIPO/D2000-0127 (; NAF/FA93631 (

Panel considered the fact that Respondent's site contained a disclaimer but held that the disclaimer did not eliminate any confusing similarity: WIPO/D2002-0799 (; WIPO/D2000-1264 ( and others).

No confusing similarity between mark and domain name found because they were used for different classes of goods and services: WIPO/D2000-0803.

But see:

"The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases": WIPO/D2003-0038 (

Confusing similarity is limited to the names involved and does not extend to the overall manner of use of the names: WIPO/D2002-0834 ( - the fact that the website to which the subject domain name resolves will confuse users is irrelevant); WIPO/D2000-0927 ( - different lines of business irrelevant); WIPO/D2000-0959 ( - the fact that Complainant and Respondent were in different businesses and the website itself might have dispelled any confusion was held to be irrelevant); ( and - the use of a disclaimer is irrelevant to confusing similarity analysis); WIPO/D2000-0016 (whether the mark is famous and the class of goods and services for which the mark was registered was deemed irrelevant); WIPO/D2000-0270 ( - knowledge of the mark is not relevant to assess identity and confusing similarity)

Section - Amount of Proof Required

Proof of actual confusion is not required, although evidence of actual confusion is persuasive.

Reporter's Notes:

Although evidence of actual confusion would be persuasive evidence of that the domain name and mark are confusingly similar, the absence of actual confusion does not preclude such a finding: WIPO/D2000-0104 (

Evidence of lack of actual confusion is irrelevant since the test is confined to a consideration of the disputed domain name and the trademarks: WIPO/D2000-0109 (

A likelihood of confusion between mark and domain name is not required: NAF/FA94375 (

The fact that emails were erroneously sent to Respondent instead of Complainant taken as proof of confusing nature of Respondent's domain name: WIPO/D2000-0573 (

The Panel observed that the level of proof that is required to show confusing similarity did not require the presentation of additional tangible evidence such as showing that consumers or others utilizing Complainant's services were actually confused between the two or that Complainant had lost business because of this confusion although Complainant could have made a stronger case by submitting such evidence: DEC/AF-137 (

Section - Pleading Identity and/or Confusing Similarity

Some Panels limit their inquiry to what Complainant has actually alleged in its Complaint.

Reporter's Notes:

Panel declined to consider whether the domain name was confusingly similar because Complainant had only pled that the domain name was identical to its alleged mark: WIPO/D2001-0719 (

If identity is pleaded but not confusing similarity, Complainant is required to prove identity: WIPO/D2000-0032 (,,,, and; NAF/FA95250 ( - since Complainant only alleged that the domain name was identical, the Panelist did not consider confusing similarity and rejected Respondent's concession that the domain name was identical), DEC/AF-388 (

Please send all inquiries to: Diane Cabell

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