A recent UDRP complaint filed by Tesco Stores Limited could have interesting implications for the future of brand protection in new generic top-level domains (gTLDs). The complaint, filed by Tesco Stores Limited against Mat Feakins, was filed with the World Intellectual Property Organization over the domain name tes.co, resulting in a decision which ordered it to be transferred to the famous brand owner.

Tesco, the largest retailer of goods in the UK and one of the largest retailers in the world, contends in its filing that the domain name is identical or confusingly similar to its TESCO trademark, noting that “a number of UDRP decisions support the proposition that the domain suffix can be used for comparison purposes if the inclusion of the suffix (in this case “.co”) lends to the overall similarity of the domain name with the complainant’s earlier rights.” Tesco is arguing here that the entire domain name needs to be taken into consideration, including the gTLD.

Not surprisingly, Feakins argues the exact opposite, stating that the gTLD should, in fact, be ignored in determining identity or similarity and that the only relevant part of the domain name is the “tes”, which is clearly not identical to any of the TESCO trademarks. He maintains that ignoring the dot that separates the two components of a domain name is “not how Internet users look at and understand domain names” and cites a range of past UDRP decisions, domain name law text books, and even WIPO content and an ICANN report to support his claims.

Clearly this respondent came prepared, but it was not enough to convince the WIPO Panel to deny the complaint. In a particularly lengthy discussion of its findings, the Panel first begins by saying that the respondent in this case raises a fundamental issue: “is it a requirement that the TLD extension be ignored when comparing a mark of a complainant with the domain name in issue for the purposes of the first limb of paragraph 4(a) of the Policy.” The panel concluded that there is no such requirement and that there is no rule that should preclude a panel from taking the TLD into account.

The panel further dismantles the respondent’s case by stating that the WIPO Overview 2.0, “designed to assist awareness of panel views on certain questions that commonly arise in proceedings under the UDRP,” clearly contemplates whether the TLD should be taken into account , pointing to paragraph 1.2:

 “[…] The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.” [emphasis added].

WIPO Overview 2.0 is also based on approximately 20,000 past UDRP cases, including project.me GmbH v. Alan Lin, supra, concerning the domain name <project.me>, in which a Panel stated:

“In this Panel’s opinion, to ignore the ccTLD identifier in all cases when considering identicalness or similarity of a .me domain name to a trademark is to ignore the commercial reality that, in the .me domain name space, the ccTLD identifier is likely to be a key part of the domain name. Thus, it is this Panel’s view that a determination of identicalness and similarity of a .me domain name may in appropriate cases be based on a consideration of the domain name as a whole – that is, of the domain name including the “.me” suffix.”

Given all of the above, the panel decided that the domain name is confusingly similar to the TESCO trademark, regardless of the dot between the “tes” and “co”, and that  Feakins also lacked rights or legitimate interests in the domain name, and registered and used in bad faith

Cases such as this one and the one cited above could set major precedents for the future of the UDRP given the impending launch of hundreds of new gTLDs. In the new and vastly expanded Internet space, brand owners will continue to turn to the UDRP as an effective means of recovering valuable digital property and protecting their brands online. I will be keeping my eyes peeled for new and interesting cases, such as, perhaps, old.navy, face.book, american.express, or smirn.off.

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
Connect the Dots

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