UDRP Spotlight: Complaint Filed Over Domains in New gTLDs

The town of Heidelberg sits in the south-western part of Germany. It is well-known for a number of things including its castle, a university, and its gothic, historic streets. It is also the home of Heidelberger Druckmaschinen AG, one of the world’s oldest and largest producers of commercial printing machines, and related services, for the global print media industry.

The company owns a number of domain names  in new gTLDs that include its brand, such as heidelberg.press and heidelberg.ink. However, it didn’t register heidelberg.equipment and heidelbergprinting.equipment. These, it turns out, were grabbed by the Respondent in a recent UDRP case filed at the WIPO.

While some elements of this case are rather conventional, others further highlight the impact that new gTLDs are having on the trademark enforcement landscape.

Complainant Vs. Respondent

Before the complaint was filed, the disputed domains resolved to a registrar parking page and the decision doesn’t mention if it contained any pay-per-click links or whether they were competitive to the Complainant. Despite the Respondent failing to file an answer in this case, after the Complaint was filed the domains began resolving to a page purporting to belong to a seller of offset printing equipment, including that of Complainant.

So, the conventional parts of this case are that parked pages and post-dispute website changes can demonstrate both a lack of Respondent’s rights or legitimate interest in the domains and also that it acted in bad faith when registering and using the domains.

The less conventional part of this case involves Complainant’s claim that “the generic Top-Level Domain (gTLD) ‘ equipment’, which serves to categorize websites specialized in equipment, tools, or machinery and which belongs to the lexical field of Complainant’s activity, increases the likelihood of confusion between the Domain Name and the Mark.” Complainant further asserted that use of the word “printing” in the other domain makes confusion even more likely.

Panel Notes that New gTLD Use is “Not a Distinguishing Factor”

What I found interesting about this decision was not the outsize role of new gTLDs urged by the Complainant but the fact that the Panel stuck to the view which is popular for legacy gTLDs such as .COM, .NET, .ORG, and the like. It held that, when considering whether the disputed domains are confusingly similar to the Complainants trademark, “the addition of suffixes such as ‘ equipment’, being a gTLD, is typically not a distinguishing factor.” The Panel did, however, find that the heidelberg.equipment domain is essentially identical to Complainant’s mark and that use of the word “printing” in the heidelbergprinting.equipment domain increases the likelihood of confusion.

While I agree with the Panel’s ultimate conclusion, its dismissal of the .equipment gTLD in the confusion analysis seems quite rote. When .COM’s and other legacy gTLDs are considered, it is natural to flick them aside as they almost never impart any meaning to a domain. So, Internet users focus on the second level (to the left of the dot) when discerning what a domain means. However, I feel that a more holistic view is warranted for new gTLDs. Just as the word “printing” can increase the likelihood of confusion between a domain and Complainant’s mark and also distinguish the domain from having a possible generic-geographic meaning, the word “equipment” serves the same function. Were this word part of the second level in a hypothetical domain heidelbergequipment.com I have no doubt the Panel here would have agreed that it adds to confusion with this mark. The fact that it is separated from the mark by a simple dot should make no difference.