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Steven Levy, president of the Accent Law Group, looks at how new generic top-level domains have changed the analysis of confusing similarity in disputes under the UDRP.
What do the terms “.com”, “.org”, and “.net” mean to you?
In the early days of the internet, these top-level domains (TLDs) were created as abbreviations of the words “commercial”, for business-related uses, “organisation” for non-commercial uses, and “network”, for internet infrastructure uses.
These days the lines between these uses has blurred: many businesses use .net to sell merchandise online and many not-for-profit charities use .com for their websites and email.
In any event, these terms almost never add any context to a domain name. Words such as “real estate”, “stop smoking”, and “Walmart” don’t take on any new or different meaning when followed by “.com”, “.org”, or “.net”.
As a result, in most decisions under the Uniform Domain-Name Dispute-Resolution Policy (UDRP), the TLD is ignored when considering whether a disputed domain name is confusingly similar to a complainant’s trademark.
A new type of confusion
In recent years, however, and particularly with the emergence of numerous new TLDs, UDRP panels have deemed it appropriate in certain circumstances to consider the text on both sides of the dot when addressing the confusing similarity issue.
The simple reason for this is that many of the new TLDs have a readily apparent meaning and add to the substance of a domain name.
For example, the domain Nike.Tokyo conveys a very specific message about the Nike sportswear brand and those viewing the domain are unlikely to expect that a website at that address is going to focus on the company’s flagship store in New York City.
What about domain names that copy words but break them up with a dot, for example, “mountain.top”?
A few recent UDRP decisions involving such domains have considered the TLD in determining confusing similarity.
In one of these cases, the complainant is the owner of the trademark ‘Wework’ in relation to the provision of office space.
The respondent registered more than 40 domains that include the brand, using a number of different TLDs. Among these were joinwe.work, nycwe.work, and rentmywe.work.
“UDRP panels have deemed it appropriate in certain circumstances to consider the text on both sides of the dot when addressing the confusing similarity issue.”
It would seem illogical to stick to a strict rule that TLDs are irrelevant and only compare complainant’s ‘Wework’ mark to the phrases “joinwe”, nycwe”, and “rentmywe” and in its discussion of confusing similarity, the UDRP panel noted that these three domains “involve a trademark which ‘spans the dot’”.
Specifically, the panel said: “The complainant’s ‘Wework’ mark is split up with the ‘we’ located at the end of the second level domain and the ‘work’ constituting the TLD.”
If each of these contested domain names is examined in its entirety, the complainant’s mark is very apparent despite the fact that each name is interrupted by a dot.
The panel held that these three domains were confusingly similar to the complainant’s mark.
Similarly, the domain tyre.plus was contested by a French manufacturer of automobile tyres that owned the trademark ‘Tyreplus’. The disputed domain did not resolve to any website content.
The UDRP panel restated the traditional rule that TLDs are most often ignored under the section 4(a)(i) confusion analysis, but quickly went on to say that it is appropriate to consider the text “on both sides of the dot” when addressing this issue in certain circumstances.
In this case, it found that the domain name is confusingly similar to the ‘Tyreplus’ mark, comparing it not only to the term “tyre” but to the full domain tyre.plus.
There are many more examples of domains that “span the dot” in their use of trademarks, such as b.mw (won by the BMW auto maker in a UDRP case); app.store (owned by Apple but not resolving to any website); and travelo.city (owned by a domain investor and resolving to a registrar parking page).
Continuing confusion
What is the practical impact of these domains?
With more browsers offering auto-complete address fields and direct navigation to popular sites, it’s inevitable that the flying fingers of some web surfers will add an extra dot when typing out desired brand names.
Equally likely is the effect of such domains on search engine optimisation (SEO), resulting in dot-spanning trademarks appearing higher in search results.
This could lead to otherwise undetected phishing, or even fake news (nytim.es, anyone?).
As a result, brand owners must continue to evolve and adapt their anti-cybersquatting strategies to meet this expanding problem.
Proactively registering or acquiring dot-spanning domains that impact their brands is a start. A good watch service coupled with a smart enforcement plan will help solidify the effort.
Steven Levy is the president of Accent Law Group and works with clients of FairWinds Partners, a domain name advisory company based in Washington, DC. He can be contacted at: slevy@accentlawgroup.com
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