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Recent Case Notes & Commentary

Confusing Similarity: Failing the Threshold Test

Forum Case No. FA2001001878988

February 22nd 2020

Little more than a standard requirement, or threshold test, the first element of the UDRP is often referred to as setting a “low bar” for the commencement of proceedings.[1] A Complainant must prove that the disputed domain name is identical, or confusingly similar to a trademark in which they have rights. It is rare for a complaint to fail on this element, but yes, it does happen.

The recent Complaint, The RCS Network v. zhouliang liang / zhou centres around the domain name <>, and the Complainant’s trademark MASS SAVE. Despite the disputed domain name containing the trademark in its entirety, the Panel found that it was ultimately not confusingly similar to the domain name.

The "Mass" part of the Complainant's trademark referred to Massachusetts

In making its decision, the Panel first considered the strength of the trademark. Comprised of two generic words, with a disclaimer of exclusivity in the term “mass” on the trademark registration, it is clear that the trademark in itself holds a low distinctive value on its own. While evidence of public use could demonstrate acquired distinctiveness, there was none submitted. Given that the other terms in the domain name did not naturally ‘read on’ to the trademark or otherwise preserve its identity, the panel ruled that the Complainant did not satisfy its burden of showing the domain name was confusingly similar to its trademark and the claim failed.

While meeting the first element of the UDRP can often be relatively easy, it is not enough for a domain to be similar to a trademark. It must be confusingly similar. In examining this, Panels look to the distinctiveness, inherent or acquired, of the trademark itself, and how it is used in the domain name and related to other terms therein. The burden of proof always remains on the Complainant, and substantive evidence of a trademark’s reputation and distinctiveness is essential for success.


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