By Steve Levy
If you own a trademark, you’re already familiar with the topic of cybersquatting — the practice where someone registers a domain name similar to your brand, often to mislead customers or profit unfairly from source confusion. The main legal tool to stop cybersquatting is an arbitration process called the Uniform Dispute Resolution Policy (UDRP) which can result in a disputed domain name being transferred to the aggrieved brand owner.
One of the things that a UDRP complainant must prove is that the disputed domain name is confusingly similar to the asserted trademark. This is not the same as the “likelihood of confusion” test applied by many courts but is a simplified consideration of whether the domain name is similar in appearance, sound, and meaning to the mark. Changes to a trademark can sometimes avoid confusion. For example, the domain name denarmarine.com was found to be not confusingly similar to the trademark DENAMARIN for pet health supplements as the simple addition of a couple of letters changed the meaning of the domain name to refer to some connection with marine activities.
However, a recent decision highlights the point that copying the most distinctive element of a mark can still satisfy the confusing similarity test and shows how the UDRP helps businesses reclaim domains names from bad actors. A company called Elecyber International Pte. Ltd. operates a popular alternative app store for Android users under the trademark APKPure. It found that someone had registered the domain apkdowner.com. Suspecting foul play, they filed a UDRP complaint arguing that the domain name was confusingly similar to its mark and was confusing users in bad faith. The domain owner, Wang Sanjin, never responded to the complaint, which likely worked against him.
After reviewing the case, the panel decided that, despite swapping out the word “downer” for “pure” in the domain name, it was still too similar to APKPure’s trademark. The decision cited the standard view that ”[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Of course, the addition of the .com gTLD is disregarded under the confusing similarity test. Specifically, the panel said that “the Disputed Domain Name <apkdowner.com> consists of the striking and starting element APK of APKPURE trademark, the descriptive word ‘downer’ (undoubtedly referring to the idea of downloading or to a state of mind depicting depreciation) and the gTLD ‘.com’. The Panel mentions that APK stands for Android Package. Yet, the combination of the starting and striking element APK associated to PURE opposed to DOWNER may infer the idea of a ‘negative (apk) pure’.”
As an added kicker, the panel noted that “the Complainant has demonstrated the reproduction of the stylized logo as well as the copy or almost copy of entire webpages on the Disputed Domain Name.”
Brand owners should not dismiss the possibility of filing a UDRP complaint simply because the disputed domain name has some differences from their mark beyond the usual cybersquatting tropes of adding generic words, misspellings (i.e., typosquatting), or using new top-level domains such as .site, .web, .store, etc.) If the mark is recognizable within the domain name and there is some evidence of bad faith trademark targeting, there may be a chance for relief through the UDRP.