WIPO case no. D2019-1463
July 30, 2019
It used to be generally accepted that in deciding if a domain name were identical or confusingly similar to a trademark, you ignored the top level domain, i.e., everything to the right of the dot, as in “.com”. In fact, you could say that it was conventional practice for panels is not to analyse the gTLD as a feature of the domain name carrying meaning for the purposes of making the comparison. The reason was that as every domain name had something to the right of the dot, virtually all of them would be different from the trademarks with which they were being compared.
However, it was also said that this general practice might not always be the case, especially when the top level domain was part of the complainant’s trademark. Accordingly, exceptions to the rule, if it were a rule, began to appear.
The issue was to some extent put to rest in the decision in Tesco Stores Limited v. Mat Feakins which has now been elevated to the level of a “seminal decision”. In that decision, a three person panel decided that the domain name “tes.co” was identical to the complainant’s trademark TESCO because the “. co” suffix, the country code for Colombia, was part of the trademark and should be taken into account. As the panel said:
“In the Panel’s view, if the TLD suffix is part of the Complainant’s trademark, whether forming part of one word, or a second and distinct word, it may be taken into account for comparison purposes.”
That decision is now cited a stating the prevailing view.
It has been cemented into that position because, under of the great expansion of the internet by ICANN, a vast array of new generic top level domains has steadily emerged. There are now 1232[1] of them, so far, and they range from “.lancia”, to “.smart”, to “.barefoot”. That is vast range of words that are now to the right of the dot. Together with what is to the left of the dot they frequently make up trademarks, words and even short sentences.
In any event, as a working rule, it can now be assumed that the top level domain of a domain name is taken into account when deciding if the domain name is identical or confusingly similar to the trademark in question.
A recent example makes that clear.
In Judicial Watch, Inc., v. Whois Privacy, Privacy by Design, LLC/Earl Cassorla, a public interest law firm in the US trading as Judicial Watch, Inc. (Complainant) had used the trademark JUDICIAL WATCH since 1994. It registered the name in the US in 2004 and continues to use it. The firm brought a complaint against a respondent with a privacy shield, Whois Privacy (Respondent), disputing the domain name <judicial.watch>, which utilised one of the new gTLDs, “.watch”, and was ultimately successful. The panel followed the approach taken in Tesco Stores and found that the trademark was identical but for the “dot” and that the domain name should be treated as if it “straddled” the dot. The effect of the principle in this instance was thus that the trademark JUDICIAL WATCH and the domain name <judicial.watch> were identical for the purpose of resolving the dispute. Clearly, without the TLD, the word ”judicial” would not be identical to the term “judicial watch” and although it might be similar, it would not be confusingly similar to it.
A Silent Respondent Wins No Favour
The respondent, sheltered behind its privacy service, did not reply to the Complaint and , although it could have tried to demonstrate a legitimate interest in the name, it would have been uphill, because it was using the Domain Name to host a website which unambiguously mimicked the Complainant’s website. The fleeting possibility of a legitimate commercial use couldn’t save the respondent, whatever its name was, from a finding of bad faith.
[1] https://newgtlds.icann.org/en/program-status/statistics