Nestle, the food and drink company, won a domain name dispute for <nes.cafe>, by relying on a seldom-used but important concept known as “spanning the dot.”
I discuss the case in a video on my YouTube channel.
Although the top-level domain is usually disregarded in cases under the Uniform Domain Name Dispute Resolution Policy (UDRP), the panel in this case said that “it may be appropriate to ‘span the dot’ and consider the TLD” because the disputed domain name <nes.cafe> — “considered in its entirety” — is confusingly similar to the NESCAFE trademark.
The issue relates to the first element of the UDRP, the Uniform Domain Name Dispute Resolution Policy, which requires a complainant to prove that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. Usually, this means that only the second-level portion of the domain name – the characters to the left of a top-level domain (or TLD), which an accused cybersquatter has actually registered – are compared with the trademark, ignoring the TLD itself, such as .com.
In fact, the WIPO Overview clearly says that the TLD “is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”
But in unusual circumstances, this is not always the rule, as the WIPO Overview adds that, “Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity.”
That’s what happened in the Nestle case for <nes.cafe>, which was filed at WIPO and resulted in a decision ordering transfer of the domain name in March 2023.
The UDRP decision says that Nestle tried to purchase the domain name from the registrant in 2022, after which the registrant requested $150,000. As a result, Nestle sent a cease and desist letter, which went unanswered, and then it filed the UDRP complaint.
Here’s what the panel concluded, as I explain in the video:
In some limited circumstances…, as part of a holistic review of the facts, it may be appropriate to ‘span the dot’ and consider the TLD….
After reviewing the prior decisions, including those discussed above and those cited in the Complaint, the Panel finds that the disputed domain name <nes.cafe>, considered in its entirety, is confusingly similar to the Complainant’s NESCAFE trademark.
The panel then went on to find that the respondent lacked rights or legitimate interests in the domain name and registered and used it in bad faith, ordering the domain name transferred to Nestle.
Given the expansion of the number of top-level domains in recent years – and there are now more than 1,500 available, from .aaa and .aarp to .zuerich and .zw – it’s not surprising to see disputes in which a trademark, like NESCAFE, spans the dot. It’s an issue that all trademark owners should be aware of when seeking to protect their brands online.
