For years, domain name disputes have largely ignored the top-level domain (TLD) -- such as ".com" -- but the arrival of new generic TLDs, or gTLDs (so far, everything from ".abb" to ".zuerich"), has focused new attention on this important legal topic.
Here's the basic issue: The Uniform Domain Name Dispute Resolution Policy (UDRP) and the new Uniform Rapid Suspension System (URS) require that a trademark owner who files a complaint must convince the arbitration panel that the "domain name is identical or confusingly similar" to the complainant's trademark. But neither the UDRP nor the URS define a "domain name." So, in a dispute over, say, <example.com>, what is the domain name? Is it "example" or is it "example.com"?
Traditionally, the answer to that question has been irrelevant -- or, at least, almost universally accepted. Indeed, WIPO's Overview has long contained this non-controversial guidance (emphasis added):
The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.
However, in a rare exception,1 one panel not only considered the TLD but found it essential for purposes of confusing similarity. The dispute involved the domain name <tes.co> and the trademark TESCO. (Note that ".co" is the country code TLD (ccTLD) for Colombia; it is not a new gTLD.) The respondent argued that the second-level portion of the domain name, "tes", was not identical or confusingly similar to the trademark TESCO -- a potentially convincing argument. But the three-member panel declined to limit its comparison to just "tes", instead considering "tes.co". Indeed, the panel wrote:
There is no rule either within the Policy or that might affect its application, that precludes panels from taking into account TLDs. It is the case that most panels do not, because most of the analysis that takes place is at the second level. And that is because, simply, the TLD, being generic in nature, does not usually form part of the trademark to which a domain name is being compared. But that does not establish any kind of rule that precludes TLDs being taken into account....
The Panel has found that a TLD suffix may be included in a comparative review. The Panel’s view is that it should include the TLD suffix for comparison purposes in this case, given that the TLD suffix forms part of the trademark (TESCO) to which the Domain Name (<tes.co>) is being compared. There is indeed a dot between “tes” and “co” but nevertheless the Panel is of the view that the Domain Name is confusingly similar to the TESCO trademark. Indeed, the dot is the only element of the Domain Name that prevents it being identical to the TESCO trademark.
Now, with the arrival of the new gTLDs, the question of whether to consider or ignore the TLD is gaining more importance.
And, more UDRP panels are addressing the issue.2 For example:
- In a new gTLD UDRP case that was similar to the <tes.co> decision, a panel considering whether the domain name <minnesota.life> was identical or confusingly similar to the trademark MINNESOTA LIFE wrote: "[W]ith the recent develop of new top-level domain names, panels have begun considering that the added TLD may serve to increase confusing similarity.... [A]s the <minnesota.life> domain name is comprised of the MINNESOTA LIFE mark with the insertion of a period in place of the space between the two-word mark such that the domain name retains identi[t]y to the mark, the Panel determines that the domain name is confusingly similar to the mark." One could imagine that use of a different gTLD, such as <minnesota.football> or <minnesota.coupons>, may have resulted in a different outcome.
- In comparing the domain name <3mespe.dental> to the trademarks 3M and ESPE (where ESPE was registered by complainant in connection with "providing material for dental impressions"), the panel found confusing similarity and said that "the top-level domain ('TLD') '.dental'... can only strengthen the notion that the domain name deals with the dental products of Complainant."
- Likewise, a panel comparing the domain name <dunkin.menu> to the trademarks DUNKIN' and DUNKIN' DONUTS found that the TLD was not essential, although it added to a finding of similarity: "It is well established that a panelist should normally ignore the gTLD element when making a comparison between a complainant’s mark and a domain name. If this Panel were to simply take that approach in the present case Complainant would succeed in the first element of the test in Policy Paragraph 4(a)(i) because of the similarity of the mark DUNKIN' and the word 'dunkin'. However because there is a reference to food and restaurants inherent in the new gTLD '.menu', the combination of the 'dunkin' element with the '.menu' gTLD extension adds further to the confusing character of the domain in issue in the present case."
- In comparing the domain name <canyon.bike> to the trademark CANYON (used by "one of the world’s leading manufacturers of racing, mountain and triathlon bicycles"), the panel said, ultimately, that the TLD was not relevant for purposes of confusing similarity -- but only after observing that "given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the [UDRP] that would preclude such an approach."
- In comparing the domain name <griffin.technology> to the trademark GRIFFIN (used by "an electronic technology company"), the panel said the gTLD was relevant -- not with respect to confusing similarity but instead with respect to the UDRP's "bad faith" element -- because "[t]he fact that the domain name in issue incorporates the top-level domain 'technology' and that Complainant is a technology company is further evidence of Respondent’s bad faith registration" and "[u]nder the facts of this case, Respondent’s registration of a domain name that incorporates the top-level domain 'technology' convinces the Panel that Respondent must have had actual knowledge of Complainant's rights in the GRIFFIN mark prior to registration of the domain name."
Clearly, the proliferation of the new gTLDs is having an impact on how and whether dispute panels consider the TLD in their decisions. As the few cases cited above show, the TLD can impact not only the "identical or confusingly similar" test in a domain name dispute, but also the "bad faith" element.
Surely, future UDRP and URS panels will be faced with even more complex and interesting questions such as: Can a TLD benefit a domain name registrant by avoiding a finding of confusing similarity or bad faith -- such as if the TLD, when read together with the second-level portion of the domain name, creates a mark that differs significantly from the complainant's mark; or if the TLD describes goods or services that are unrelated to the complainant?
At the very least, complainants and respondents in domain name disputes should no longer assume that the TLD is irrelevant.
1 Update (August 19, 2015): A reader alerted me to one of the earliest UDRP decisions, in which the panel found the domain name <six.net> confusingly similar to the trademark SIXNET.
2 Update (August 20, 2015): Another reader alerted me to a UDRP decision published just after this blog post was originally written, in which the panel found the domain name <me.tv> confusingly similar to the trademark METV. The panel wrote:
While Respondent correctly notes that numerous panels have held that the Top-Level Domain is often deemed inconsequential or irrelevant when comparing a complainant's mark with a respondent's second-level domain, such is not always or necessarily the case. This proceeding provides an example of a (perhaps rare) exception to that general principle. Here, the ccTLD ".tv" is closely associated in the minds of English speakers with the word "television," and accordingly is part of what renders the domain name "me.tv" identical or at least confusingly similar to the METV mark owned by Complainant. Accordingly, the Panel finds that Complainant has established the first element required under the Policy.