What Is CONFUSINGLY SIMILAR?
- domaintimesinfo
- Oct 13
- 4 min read
It is the basis of the dispute resolution process under the UDRP[1] that the person claiming the domain name has to prove that the domain name being claimed is identical or confusingly similar to a trademark that the claimant owns.
If it is identical, it will be fairly obvious, because the domain name will be the same as the trademark which will probably be re-produced in its entirety or at least will be identifiable. That will often be the case, because the person registering the domain name has simply copied the trademark. The claimant will therefore have already reached first base in its claim.
But if it is not identical, it may still be confusingly similar, and that will be enough for the claimant to get to first base. To get there, the claimant will have to convince the Panel of arbitrators hearing the case that the domain name is confusingly similar to the claimant’s trademark.
This means that the claimant will have to show two things, that the domain name is similar to the trademark and that the similarity is confusing.
Often, also, this will be reasonably clear, meaning that someone looking at the domain name and comparing it with the trademark would say, yes, it is similar because there are some common features of the trademark that are in the domain name.
Say for example that the Tesla company wants to claim the domain name <teslacars.com> and Tesla owns the trademark TESLA. (We usually spell a trademark in capital letters so that they stand out; and those little brackets <…> are just the way we usually express a domain name). Tesla would be able to say, well, the domain name is similar to the trademark because the domain name includes the TESLA trademark, which is a similarity.
Tesla would then be able to go on and argue that not only is the domain name similar to the trademark, but it is also confusingly similar to it, because the “cars” in the domain name are probably meant to be Tesla cars, simply because the word “cars” is in the same expression as the “tesla” and would be seen at the same time as the word “tesla” is seen.
But why is the domain name confusingly similar to the trademark when the word “cars” seem pretty clearly to mean Tesla cars? Because anyone looking at the domain name would wonder, for that very reason, whether the domain name was an official and genuine domain name of TESLA.
Lawyers have decided on a few guides to help you make these decisions on what is probably confusingly similar and what is not. One of them is that if a trademark is in a domain name and is there in its entirety, the domain name will probably be confusingly similar to the trademark. Why? Because the trademark, like TESLA in <teslacars.com>, will probably be the first and most dominant feature of the domain name, as it is in our example, and it shows that the person who made up and registered this domain name was on about Tesla cars.
Before we leave this issue, here is another example of the sort of feature that will help you decide if a domain name is confusingly similar to a trademark. It came up in a case I had recently and often comes up in various forms in cases that arbitrators have to decide.
Take McDonalds. McDonalds Inc. is one of the most famous companies in the word and of course it operates internationally. As you can imagine, it also has to claim a lot of domain names that it says are abuses of its MCDONALD’S trademark. In the case I had, someone had registered the domain name < mcdonalds.uk.com>. The MCDONALD’S trademark was of course clearly visible in the domain name ( the apostrophe can be disregarded for present purposes), so you could assume that it was invoking or referring to that trademark. But what about the “uk”? Did that stop the domain name form being confusingly similar to the trademark? No, because all that the addition of “uk” meant was that the domain name was trying to invoke the activities of McDonald’s in the “uk”, which everyone knows is an abbreviation for the United Kingdom. The result was that the domain name was confusingly similar to the trademark, because the reader is left with the question whether this was an official and genuine domain name of McDonald’s or not.
So, here is a principle that you will use find useful: when a domain name includes the entirety of another party’s trademark and also a geographic reference to a country, it will probably be confusingly similar to the trademark.
Have a read of how I expressed this principle. The case is McDonald’s Corporation V. Redactsed for Privacy, FORUM Claim FA 2508002171800, and you can read it on the internet at
While you are at it, have a look at some of the many ways in which the MCDONALD’S trademark has been used in domain names with all sorts of additions, but the domain names have still been held to be confusingly similar to it. Go to:
to get the full menu of cases and type in “mcdonalds”.
[1] The Uniform Dispute Resolution Policy, the main body of law that will enable the dispute to be decided.
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