As I have written more than once before, top-level domain names (“TLDs”) are playing an increasingly important role in some disputes under the Uniform Domain Name Dispute Resolution Policy (“UDRP”).
In one of the latest cases, a UDRP panel found that the respondent’s domain name <judicial.watch> was identical to the complainant’s trademark JUDICIAL WATCH. In doing so, the panel cited both the established precedent on TLDs as well as the more recent trend.
While, at first glance, this might not appear surprising, consider that for years UDRP panels have compared only second-level domains to trademarks — so, in this case, the question could have been whether “judicial” (not “judicial.watch”) is identical or confusingly similar to JUDICIAL WATCH.
Specifically, the panel wrote:
It is well established that, under the [UDRP], the generic Top-Level Domain (“gTLD”) typically is not considered when determining the “identity or confusing similarity” element. This general rule, however, has admitted more exceptions in recent years, due chiefly to the advent of numerous new gTLDs, including, as is relevant here, the “.watch” gTLD. In some instances, the trademark in question may be said to “straddle” the “dot” in the domain name, thus making the gTLD relevant to the “identity or confusing similarity” analysis.
The UDRP panel cited what it called the “seminal case on this point,” a 2013 decision in which the domain name <tes.co> (using the country code TLD for Colombia) was found confusingly similar to the trademark TESCO (owned by a British retailer).
Perhaps the most interesting UDRP decision in which the TLD played an essential role — because the trademark “spanned” or “straddled” the dot — involved the trademark BMW and the domain name <b.mw>, the only UDRP dispute of which I am aware relating to a single-character second-level domain.
In the <judicial.watch> case, the decision says that the domain name “resolves to a website that mimics Complainant’s site.” The complainant, Judicial Watch, is a public interest law firm in the United States that had used its trademark at least since 1994. Its website describes it as a “conservative, non-partisan educational foundation, promotes transparency, accountability and integrity in government, politics and the law.”
After addressing the first element of the UDRP (identical or confusingly similar), the panel also found that the complainant had established the second (no rights or legitimate interests) and third (bad faith) elements of the UDRP.
As in a number of UDRP decisions, the panel said that the respondent’s use of the disputed domain name was problematic even though “[i]t is not apparent from the record that Respondent has actually profited commercially from his faux website” — because, “given the deception already apparent, there is no reason for Complainant to have to wait for this to occur before taking action. As things currently stand, Complainant is at the mercy of Respondent, whose possible forbearance from economic mischief could at any moment cease.”