The Strength of Top-Level Domains in UDRP Decisions

Another domain name dispute decision -- this one for <24hour.fitness> -- has highlighted the increasing (potential) relevance of the top-level domain (TLD) under the Uniform Domain Name Dispute Resolution Policy (UDRP). As I have written before (see "When is the Top-Level Domain (TLD) Relevant in a Domain Name Dispute?"), the proliferation of new TLDs is having an impact on whether and how UDRP panels consider the TLD in their decisions. The traditional rule that the TLD is usually disregarded in assessing whether a disputed domain name is identical or confusingly similar to a complainant's trademark is clearly not always the case -- especially now that more disputes involving TLDs other than <.com>.

The <24hour.fitness> decision is an excellent example.

In that case, the complainant was 24 Hour Fitness USA, Inc. ("24 Hour Fitness USA"), which owns at least one U.S. trademark registration for 24 HOUR FITNESS. The complainant argued that the domain name was identical to its trademark, because the domain name "features the entire mark, merely omitting the spaces and using the FITNESS portion of the mark as a generic top-level domain ('gTLD'), which in this case increases the likelihood of confusion." The UDRP panel agreed.

Had the panel disregarded the <.fitness> TLD, it would have been forced to compare only the second-level domain (that is, "24hour") with the complainant's trademark (that is, 24 HOUR FITNESS). It's possible that the panel would have found the two not to be confusingly similar because the absence of the word "fitness" from the second-level domain could have been considered significant.

However, the UDRP panel made clear that, in this case, the TLD was important. Citing similar decisions, the panel in the <24hour.fitness> decision said:

Complainant... contends that Respondent’s <24hour.fitness> domain name is identical to its 24 HOUR FITNESS mark. Complainant argues that Respondent’s domain name merely omits the spaces and uses the FITNESS portion of Complainant’s mark as a descriptive gTLD. Panels have agreed that using a gTLD that is descriptive of a complainant’s business can lead to a finding of identicality and increase confusing similarity.... As such, the Panel finds that <24hour.fitness> is identical to the 24 HOUR FITNESS mark under Policy ¶ 4(a)(i).

Interestingly, this decision (and others in which the TLD has played a role) does not address the question of whether a TLD might ever be taken into account as a factor against a finding of confusing similarity -- such as in hypothetical disputes that might be brought by 24 Hour Fitness USA against any of the following domain names (each of which contains an actual new gTLD): <24hour.bargains>, <24hour.broker>, <24hour.clinic>, <24hour.loan>, <24hour.nyc>, <24hour.photos>, <24hour.salon> or <24hour.support>.

In any event, as the <24hour.fitness> decision makes clear, the TLD itself can be an important factor in finding confusing similarity under the UDRP -- an issue that is likely to arise with increasing frequency.

When 'Confusing Similarity' in UDRP Cases Gets Confusing

The first element of the Uniform Domain Name Dispute Resolution Policy (UDRP) requires a complainant to prove that the disputed domain name "is identical or confusingly similar to a trademark or service mark in which the complainant has rights." It's unusual for a complainant to fail on this first of three prongs, but one recent case demonstrates just how uncertain the UDRP can be sometimes.

'A Standing Requirement'

The first UDRP element has been called nothing more than "a standing requirement" by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. Once a complainant has established that it actually has rights in a trademark, proving that the disputed domain name is "identical or confusingly similar" to that trademark is usually straightforward.

Indeed, numerous UDRP decisions have said that "the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." The WIPO Overview elaborates the majority position this way:

The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms... typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.

In other words, so long as a disputed domain name contains the complainant's trademark, a UDRP panel will typically find that the domain name is confusingly similar to the trademark, even if the domain name contains additional words.

Importantly, this low threshold only means that the complainant has succeeded on the first of three elements. The complainant still must prove the second and third UDRP elements: that the domain name registrant has "no rights or legitimate interests in respect of the domain name" and that the domain name "has been registered and is being used in bad faith." The bad faith element, in particular, is often the most challenging hurdle.

One Little Word: The Exception of the Jaguar Land Rover Decision

Like all rules, of course, the first UDRP element has exceptions. One of them appeared, albeit with little explanation, in a dispute over the domain name <rangeroverchauffeur.com> that was filed -- and lost -- by Jaguar Land Rover Limited, the car company.

According to the decision at the Forum, Jaguar Land Rover Limited is "a globally renowned manufacturer of premium automobiles and sport utility vehicles" that has "has produced and sold vehicle models under the Range Rover® brand" since at least 1970. The disputed domain name, <rangeroverchauffeur.com>, was used by the registrant as part of its "independent chauffeur service."

While the case presented an interesting issue as to whether the domain name registrant had rights or legitimate interests in the disputed domain and whether the domain name was registered and used in bad faith, the case effectively ended at the first element of the UDRP.

In finding against Jaguar Land Rover Limited on the first UDRP element, the panel wrote: "Complainant is not in the business of being a chauffeur. Complainant’s marks are only for land motor vehicles and parts thereof. The addition of ANY word to Complainant’s mark does not automatically create confusing similarity."

(Interestingly, the domain name registrant prevailed despite its failure to even file a response. This is what I have written about before as "an embarrassing but not uncommon occurrence.")

While the panel's decision is consistent with its own previous decision three years earlier in a dispute over the domain name <mountainrovers.com>, the <rangeroverchauffeur.com> decision appears to be even more of an outlier. While Jaguar Land Rover Limited might not provide chauffeur services, it seems undeniable that chauffeur services are closely associated with Jaguar Land Rover Limited's product, that is, automobiles. (One dictionary definition says a "chauffer" is "a person whose job is to drive people around in a car.")

One Little Word: More About the Rule, Not the Exception

Many other UDRP decisions have said that "when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity." For example, in the decision from which the previous quote was taken, the domain name <yellowroadway.com> was found to be confusingly similar to the trademark YELLOW despite the addition of the word "roadway," because YELLOW was used in connection with "common carrier freight services and related business activities " and the word "roadway" "points toward, not away from, [those] services."

Under the <yellowroadway.com> decision and others like it, as reinforced by the WIPO Overview (which panels at other UDRP service providers, including the Forum, often cite), it seems unusual that the panel in the <rangeroverchauffeur.com> case did not find the domain name confusingly similar to the RANGE ROVER trademark.

Interestingly, the panel in the <rangeroverchauffeur.com> also found that the complainant failed to prove the second and third elements of the UDRP, so its conclusion on the first element was not necessary in reaching its decision to deny a transfer of the domain name.

Lessons Learned

The <rangeroverchauffeur.com> decision may be a striking exception to the general rule about confusing similarity, but it is important because it offers lessons for both trademark owners and domain name registrants. Trademark owners should learn that no UDRP case can be taken for granted, which is why I always include extensive factual and legal arguments in my clients' complaints, even on what seem to be straightforward issues. And domain name registrants should learn that even a strong trademark in a domain name does not always result in a transfer because sometimes unusual decisions are decided in favor of domain name registrants.

A Record Year for Domain Name Disputes?

With just a little more than three months left in 2016, the number of domain name disputes filed at the World Intellectual Property Organization (WIPO) appears to be headed for a record year.

(Update: It’s Official: 2016 Was a Record Year for Domain Name Disputes)

According to public data published on the WIPO website, the current number of domain name disputes filed this year (as of this writing, September 27, 2016) is 2,228 -- which would indicate that the total might reach 3,011 cases by December 31. If that trend holds, the total would eclipse the previous most-active year of 2012, when 2,884 cases were filed.

Of course, it is impossible to predict how many domain name disputes will be filed between today and the end of the year. And, the WIPO statistics do not represent all of the complaints filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) (since there are four other service providers), but WIPO traditionally has been the most popular provider and, in any event, is the only provider that publishes real-time data on case filings.

Interestingly, even if the number of disputes remains constant between now and the end of 2016, the total number of disputed domain names (since a single case can include multiple domain names) would only reach 5,373 -- the third-highest level ever recorded at WIPO. (The most active year was 2013, when 6,191 domain names were disputed; and the second most active year was 2014, when 5,603 domain names were disputed.)

What's behind the potential record-setting year in domain name disputes? I see at least two trends.

First, many domain name registrants are engaging in a new type of cybersquatting activity that trademark owners find particularly troublesome, involving fraudulent actions that target specific victims or groups of victims. Among these cases are those in which a domain name is used as part of an employment scam aimed at job seekers.

For example, in a dispute involving the domain name <intercontinental-hotel.com>, the panel wrote that the domain name was used "as part of an employment and phishing scam" where the registrant was "passing off itself as the Complainant, apparently so as to obtain certain information from Internet users as a result of the intentionally created confusion between the disputed domain name and the [Complainant's] [t]rademark." (Disclosure: I represented the complainant in that UDRP case.)

A second trend that certainly accounts for an increase in the number of domain name disputes is the ongoing launch of new global top-level domain names (gTLDs). For example, recent UDRP decisions have involved such domain names as <marlboro.news>, <debeers.feedback>, <legogames.online>, <velux.london>, <mckinsey.careers> and many others. Obviously, the new gTLDs have created new opportunities for cybersquatters.

Still, despite the rise of the new gTLDs, .com domain names remain the most frequently disputed, accounting for about 58% of all disputed domain names in WIPO proceedings this year.

After 2016 comes to an end, I'll take a closer look at the the year in domain name disputes, including trends that may have impacted the potential record number of filings.