In the olden days of UDRP complaints, when pleadings were submitted on printed paper, the domain landscape was ruled exclusively by TLDs such as .COM, .NET, .ORG, and their neglected cousin .BIZ. When a cybersquatter created some sort of not-too-clever knockoff of a well-known brand and was then hauled before the imposing authority of the NAF or the WIPO, Panels routinely said that the TLD of a domain can be discarded like an inedible apple stem since they add nothing to meaning of a domain or to the analysis of the first UDRP element: likelihood of confusion between the domain and the asserted trademark. Decisions involving domains in these “legacy” TLDs still apply this philosophy.
However, with the advent of new gTLDs we’re seeing a new trend where some Panels acknowledge that some extensions have more meaning and thus carry more weight in the UDRP and URS analysis. Though some still stick to the old ways, more and more are waking up to what cybersquatters have known for at least the last year of new gTLDs, which is that the TLD is no different than any text to the left of the dot and that, for example, snickers.clothing can tell as much about the nature of a domain as snickersclothing.com.
Although this awakening amongst Panels has been going on for many months now, a recent decision involving the domain novotelqueenstown.kiwi has brought the issue into greater focus and suggested that new gTLDs can have an impact not only on the confusion analysis, but also on the other two elements of the policy: whether a respondent has any rights or interests in a domain, and whether it acted in bad faith when it registered and used the domain.
In this case, the well-known Novotal hotel chain operates properties in 60 countries around the world, including seven in New Zealand and the domain owner, in response to a demand letter, offered to sell it to Novotel for over US$1,700.
Unpacking How a New gTLD UDRP Case Unfolds
The Panel in this case first addressed the question of whether a TLD should be considered or disregarded in the UDRP analysis and cited a string of cases where this was not the case – particularly where the extension relates in some way to the goods or services associated with a complainant’s trademark. For example, a decision awarding transfer of the domain sanofi.international specifically mentions that use of the “.international” TLD will, inevitably, bring to mind the global dimension of the Complainant’s activities.
But the Panel didn’t stop there and went on to state that “it may be appropriate to consider the use of a gTLD extension in a disputed domain name as part of the analysis of the second and third elements of the Policy, as the extension used may have a bearing on a respondent’s intent in registering or using a domain name “ With regard to the second UDRP element, apart from the other issues typically considered, the Panel recognized that the Respondent specifically chose “the gTLD extension ‘.kiwi’ which suggests a connection to New Zealand” and indicates that it was well aware of the NOVOTEL mark and the presence of branded hotels in New Zealand when it registered the domain. As such, a presumption is created that it had no rights or legitimate interest in the mark (and the presumption stood since no response was filed in this case).
Finally, on the question of bad faith, the Panel again cited the .kiwi gTLD and found that “it is inconceivable that Respondent registered such a confusing domain name by chance.” This, plus the request for a significant price for the domain lead the Panel to conclude that the Respondent had acted in bad faith.
What This Means for the Future of New gTLD UDRP Disputes
Going forward, we should see more and more of this nuanced approach to new gTLDs. There may be situations in which they really don’t have any bearing on a dispute but I expect, more of than not, the meaning of the TLD will factor in to consideration of all three UDRP or URS elements. So, while new gTLDs may have increased, many fold, the opportunities for cybersquatting activity, they have also provided a larger hook on which brand owners can hang their disputes.
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