whydid2016domainnamesquattingdisputesexpandudrpthinking2016 saw an increase in domain name squatting disputes and the largest portion of these was against those in the new gTLD space. Many UDRP and URS decisions issued last year had some unique issues presented by new gTLDs, thus forcing Panels to stretch their thinking in relation to these cases.

The most interesting domain name squatting disputes involved domains that copied words but broke them up with a dot. For example: “nons.top”. This required the Panel to consider the TLD in determining confusing similarity.

 

WEWORK’s Domain Name Squatting Case

In one of these domain name squatting cases, the complainant is the owner of the trademark WEWORK. In relation to the provision of office space the respondent registered a large number of domains that include the brand. Among these were joinwe.work, nycwe.work, and rentmywe.work.

The typical rule in UDRP decisions is that the TLD is irrelevant and not considered when looking at a likihood of confusion.

This may make sense with .com, .net, .org, etc., since they add no meaning to the domain. However, with the advent of new gTLDs and their broader scope of meaning, it would seem nonsensical to stick to this strict rule.

In this case, the Panel would have had to compare complainant’s WEWORK mark to the phrases “joinwe”, nycwe”, and “rentmywe”.

As such, in its discussion of confusing similarity, the panel noted that these three domains “involve a trademark which ‘spans the dot.’” Specifically, “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.”

When one looks at each of these domain names in their entirety, the complainant’s WEWORK mark is very apparent despite the fact that each of these Domain Names is interrupted by a dot. The panel held that these three domains are confusingly similar to the complainant’s mark.

 

TYREPLUS’s New gTLD Domain Name Squatting Case

Similarly, the domain tyre.plus was contested by a French manufacturer of automobile tires.

It’s trademark is TYREPLUS and the disputed domain did not resolve to any website content.

The Panel restated the traditional rule that TLDs are most often ignored under the ¶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.

 

New gTLDs Can Add Meaning & Context to a Domain Name Squatting Dispute

Another issue that’s cropping up more and more involves consideration of the TLD in reviewing the meaning of a domain name.

A good example of this is the keurig.store case. When considering whether the domain is confusingly similar to the well-known KEURIG trademark, the Panel noted:

“In this case, given the usual, dictionary meaning of the word ‘store’, the use of this gTLD does not avoid confusing similarity, as it gives the impression that the website at the Disputed Domain Name is an online store at which the Complainant’s products are available for purchase.”

This issue can also cut the other way. Some of you may recall the Fimo.club case in which a Panel declined to order a transfer of the domain to the owner of the FIMO trademark for modeling clay.

Part of the rationale was that the word “club” implied that the website would be hosted by a hobbyist who is not seeking to earn money through use of the domain but simply share tips, information, and their love of the product.

As a result of these trends in domain name squatting cases, brand owners must continue to evolve and adapt their anti-cybersquatting strategies including the use of a good watch service and a smart enforcement plan.

It is no longer sufficient to simply look for domains that are confusingly similar to a brand only on the left side of the dot. It’s also critical to understand how a new TLD may affect the confusion analysis, either in favor or in opposition to the concerned brand owner.

In this new environment, sophisticated brand owners and their counsel who are attuned to the nuances of the UDRP will have a greater chance of winning outcomes and will waste less money pursuing complaints that have a very questionable chance of success.

Steve Levy

Steve Levy

Senior Advisor at FairWinds Partners
It can be difficult tackling domain name and social media infringement without the right expertise. Steve covers UDRP cases, URS cases, and all other acronyms and topics related to cybersquatting and usersquatting.
Steve Levy
How Did 2016 Domain Name Squatting Disputes Expand UDRP Thinking?

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