Recent Case Notes & Commentary

MISSING THE POINT: ASSESSING THE RELEVANCE OF THE TLD

Jalmar Carvalho Araujo v. Jeff Hernandez / Black Rock Coffee Bar

FORUM Case: FA2005001895665(June 19, 2020)

<br.coffee>.



In ascertaining whether a Respondent’s domain name is confusingly similar to the Complainant’s trademark or service mark, a Panel intensely scrutinises the spelling and grammar of the “string”, as it is called, of the domain name, i.e. the letters that go to make up the domain name. This was simpler in the nascent days of the internet when the vast majority of domain names used well known generic and country-code top-level domains (TLDs), such as .com or .co.uk. In recent years, ICANN has approved hundreds of new TLDs covering a broad range of interests, such as .finance, .bible, .pizza and .singles and looks as if it will keep on increasing them. The proliferation of TLDs has resulted in some registrants using some clever concoctions, such as <youtu.be>, <flic.kr> and <goo.gle> to try to get past the scrutiny of courts and arbitrators. Websites such as xona.com/domainhacks/even allow a user to search for any potential “domain hacks” that allow a registrant to circumvent a domain name already in use and come up with a creative solution. This creativity has the potential to put UDRP Panelists in an interesting position when considering identical and confusing similarity.

After all, although generalisations are said to be odious, before the era of the new gTLDs it was generally accepted that in making the comparison between the domain name and the trademark, the gTLD of the domain name was ignored. This was said to be because every domain name had to have the umbrella of a gTLD, that if they were taken into account no domain name would ever be identical or confusingly similar to any trademark and the real comparison should be between the substance of a domain name and the substance of a trademark.


But the appearance of such creative new gTLDS as were spawned by the expansion of the internet naming system often changed the meaning or gave a meaning to a domain name and it came to be held in general that it was unreal to ignore the TLD. Thus the view has taken hold that it is quite legitimate to include the extension when making the comparison. That is largely the practice today. The present case of Black Rock Coffee Bar shows how it is done in practice and why.


In this case, the Complainant alleged that the domain name in dispute, <br.coffee>, was “virtually identical” to his registered trademark, BRCOFFEE, notwithstanding the insertion of a period between “br” and “coffee”. Panelist Dennis A. Foster agreed that the threshold requirement of confusing similarity was clearly satisfied by this, and that the insertion of the period “is of no moment”, “for it is required of all domain names that a period be included at some point”. The Panel cited similar decisions to that effect, such as Totaljobs Group Limited v. Faisal Khan,D2017-0295 (WIPO Apr. 7, 2017) in which <total.jobs> was found to be confusingly similar to the TOTALJOBS trademark.


However, this issue is not one that has slipped past WIPO. In WIPO’s Jurisprudential Overview 3.0, it clarified that whilst the TLD alone is to be disregarded in assessments of confusing similarity, if the TLD in combination with the second level portion contain the trademark itself (ie. br.coffee containing BRCOFFEE), then panels can assess the entirety of the domain name for confusing similarity (per 1.11).


Furthermore, the TLD is able to be scrutinised when assessing whether a Respondent has a legitimate interest in the domain name or whether they are using it in bad faith (2.14 and 3.2.1 respectively).


The conclusion is that, today, most Panelists take the TLD seriously when assessing confusing similarity, and it would be unwise for anyone to ignore them. Moreover, potential Respondents should take .care when registering .domains!