In this case study video, I discuss the only decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) that involved a single-character domain name: <b.mw.> (Dot-mw is the country-code top-level domain, ccTLD, for Malawi.)
As I explain in the video, this decision provides an exception to the general rule that the top-level domain name is ignored when comparing a domain name to a trademark for purposes of confusing similarity under the first part of the UDRP's three-part test.
The complaint was filed by the popular German car company known by the acronym BMW. If you disregard the top-level domain name, .mw (as is typically done in UDRP cases), then you’re simply left with comparing the second-level domain name – which is just the single letter “B” – with the trademark BMW. In other words, is the letter “B” identical or confusingly similar to BMW? That seems like a pretty big leap for any trademark owner to make.
But in this case, the panel said that the top-level domain .mw should not be disregarded and that the proper comparison was between the entire domain name <b.mw> and the trademark BMW:
In this case, the disputed domain name differs from the Complainant’s BMW mark only by the addition of a punctuation mark (“.”) between the “b” and “mw” in the mark. While “.mw” is the TLD, consideration of TLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity under the first element of the Policy, and the Panel finds such consideration to be appropriate in the circumstances of this case.
The panel didn’t elaborate on what the “appropriate circumstances” might be to consider the top-level domain name in a UDRP case. But it’s easy to imagine that the registrant’s actions in this case – registering domain names that included trademarks owned by other car companies and trying to sell the domain name for $1 million – might have influenced the panel.
So, when should a trademark owner consider the top-level in deciding whether to file a UDRP complaint? The BMW decision doesn’t give a lot of guidance, but the case reminds me of that famous line from Supreme Court Justice Potter Stewart, who said that he might not be able to define obscenity, but he knows it when he sees it. The same might be said for top-level domains: A trademark owner will know if a TLD is relevant when they see it, just like BMW obviously saw that the TLD dot-.mw was relevant in this case.
