I just wrote about the importance of a top-level domain name (TLD) where it forms a part of the relevant trademark (such as in the case of <judicial.watch>), but another recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) makes clear that the TLD is important under another circumstance, too: when it relates to the goods or services associated with the trademark.
The most recent UDRP decision on this issue involves the domain name <oasis.clothing>, which was filed by Oasis Fashions Limited, a women’s fashion garment and clothing retailer in the United Kingdom. Apparently, as the UDRP decision implies, Oasis Fashions does not own any trademarks for OASIS CLOTHING, but the company obviously is in the clothing business.
In its decision, the UDRP panel easily found that the domain name <oasis.clothing> was identical to Oasis Fashions’ OASIS trademark, for which it owns registrations in the United Kingdom as well as in the European Union. And on this part of the UDRP analysis, the panel said that the TLD, <.clothing>, was “not relevant for the purpose of assessing identity or confusing similarity to the trademark.”
However, on the UDRP’s bad faith element, the panel found that the <.clothing> TLD was relevant. As the panel wrote (emphasis added):
According to the unrebutted assertions of the Complainant, its OASIS trademark was largely used in commerce well before the registration of the disputed domain name. The Panel therefore finds that the Respondent was in all likelihood aware of the Complainant and its rights in the term “oasis” at the registration of the disputed domain name. This conclusion is also supported by the fact that OASIS is a fanciful trademark, the disputed domain name is registered in a gTLD (“.clothing”) which expressly refers to the area of business the Complainant is active in, and also the Respondent was found not to have rights or legitimate interests in a name or trademark corresponding to the disputed domain name. Under these circumstances, the Panel finds that the Respondent has registered the disputed domain name having the Complainant’s trademark in mind.
The panel cited a similar UDRP decision, involving the domain name <loehmanns.clothing>, in support of this conclusion. In that case, interestingly, the UDRP panel said that the TLD was relevant to the UDRP’s first element (identical or confusingly similar), as well as the UDRP’s third element (bad faith), writing both that (1) “the adoption of the present gTLD ‘clothing’ is particularly apt to increase the risk of confusion as the Complainant’s trademark is registered and used in connection with such goods” and that (2) “the disputed domain name is registered in a gTLD (‘.clothing’) which expressly refers to one of the classes of products claimed in some of the Complainant’s trademark registrations and to the area of business the Complainant is active in.”
Of course, these types of disputes — that is, where the TLD relates to, but does not form a part of, the trademark — are not limited to the <.clothing> TLD.
One of the first UDRP cases to address this issue involved the domain name <canyon.bike>. In that case, the UDRP panel appeared to agree with the complainant’s argument that the <.bike> TLD “exacerbates confusing similarity because it describes a core product of the Complainant.” Importantly, the panel there also said 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 Policy that would preclude such an approach.”
In addition to the <canyon.bike> case, I discussed some of the earlier UDRP decisions in which the TLD was relevant because it related to the complainant or its trademark in a previous blog post, “When is the Top-Level Domain (TLD) Relevant in a Domain Name Dispute?”
And, in one of the other more recent UDRP decisions on the topic — involving the domain name <aetna.health> (disclosure: I represented the complainant) — the panel noted that “the Respondent selected a ‘.health’ gTLD that is directly related to the Complainant and its business,” which “indicates an additional element of bad faith registration and use.”
As all of these decisions collectively make clear, the TLD may be relevant to any of the UDRP’s three elements, even where it doesn’t form part of the trademark in dispute.