Cybersquatters sometimes use domain names that look like trademarks -- for example, by using two letter v's in place of the letter w; the letters r and n instead of the letter m; or the number 0 instead of the letter o. In this video, attorney Doug Isenberg discusses three recent cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) in which trademark owners filed -- and won -- complaints for these so-called homoglyphs, or lookalike domain names.
Cocaine Bear: The Domain Name Dispute
“Cocaine Bear” is not just the title of a 2023 movie — it’s also a domain name dispute. A company that apparently operates a mall in Kentucky featuring (maybe) the bear on which the movie is based filed — and lost — a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) for the domain name <cocainebear.com>.
Spanning the Dot in Domain Name Disputes: The <nes.cafe> Case
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.” 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.
Barclays v. 'Barclays': When a Cybersquatter Identifies Itself as a Trademark Owner
Leonardo DiCaprio Recovers Lost Domain Name
Actor Leonardo DiCaprio failed to renew his domain name <leonardodicaprio.org>, but he was able to recover it by filing a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP). In a new video, I discuss what happened in the case and what lessons other trademark owners can learn from DiCaprio's mistake.
Trademark Owners File – and Win – More UDRP Cases Than Ever (Domain Dispute Digest, Q4 2022)
Email Address Disputes are *Not* Domain Name Disputes
In a decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), a trademark owner lost its case because the dispute was really about an email address that contained its trademark -- not a domain name. Although the panel recognized that the respondent was using the domain name in connection with what it called a "fraudulent enterprise," it said that the domain name "neither looks nor sounds like" the trademark.
Domain Disputes Explode, Reach Record High for Ninth Consecutive Year
Adding a Second Domain Name to an Ongoing UDRP Case
In this decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), the Italian energy company Enel asked WIPO to add a second domain name to its case after the complaint was already filed. To address the issue, the panel issued a procedural order and then agreed to add the domain name, writing that doing so would "be fair and practical, and not prejudicial to the Respondent." The action made the UDRP case even more effective for Enel by avoiding the need to incur the additional time and expense of filing yet another complaint.