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When to Consider 'Both Sides of the Dot' in a Domain Name Dispute

Doug Isenberg

Yet another UDRP decision has found the top-level domain name relevant for purposes of confusing similarity.

In the case, filed by Michelin, the panel found the domain name <tyre.plus> confusingly similar to the trademark TYREPLUS. Specifically, the panel wrote:

If one ignores the "dot" between the Second-Level Domain ("tyre") and the Top-Level Domain ("plus"), the mark and the Domain Name are identical. In most cases under the Policy, the Top-Level Domain ("TLD") is ignored when considering confusing similarity. In recent years, however, and particularly with the emergence of numerous new TLDs, panels in certain circumstances have deemed it appropriate to consider the text on "both sides of the dot" when addressing the "confusing similarity" issue.

It's an issue that's arising with increasing frequency — just as I had predicted. (See "The Strength of Top-Level Domains in UDRP Decisions”.) Indeed, the same panel as in the <tyre.plus> case had reached a similar conclusion in an earlier case that included the domain names <joinwe.work>, <nycwe.work> and <rentmywe.work>; there, the panel said that "Complainant's WEWORK mark is very apparent despite the fact that each of these Domain Names is interrupted by a dot."

While the issue may seem obvious (that is, how could a panel not find the domain name <tyre.plus> confusingly similar to the trademark TYREPLUS?), it's a relatively new twist in UDRP cases. As I've written before (see "When is the Top-Level Domain (TLD) Relevant in a Domain Name Dispute?”), many UDRP panels have historically said that top-level domains "are to be disregarded", "shall be disregarded" or even "must be disregarded." But the new gTLDs have started to change that, at least in some cases.

Perhaps the most extreme example of the relevance of a top-level domain remains the UDRP case in which a panel found <b.mw> confusingly similar to the BMW trademark. (.mw is the country code top-level domain for the African country of Malawi, which has adopted the UDRP.) In that case, the panel wrote that "consideration of TLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity under the first element of the Policy." Clearly, the single-letter "b" as a second-level domain in connection with a different top-level domain could take on an entirely different meaning.

In the <tyre.plus> case, the top-level domain seems significant, given that a different TLD could have made a difference. For example, <tyre.town> could have signified a domain name for the Town of Tyre, New York; <tyre.city> could have signified a domain name for a city on the southern coast of Lebanon; <tyre.law> could have signified a domain name for attorney Jim Tyre at the Electronic Frontier Foundation; or the domain name <tyre.play> could have signified a domain name for Arena Football League player Tyre Glasper.

Whether such other domain names would have been found confusingly similar to Michelin's TYREPLUS trademark is a fascinating question — and one that UDRP panels ultimately will probably have to address (though most likely with respect to different trademarks and domain names). And, even if confusing similarity is found, it will be interesting to see what relevance, if any, the top-level domain name may have on the other UDRP requirements (rights or legitimate interests; and bad faith).

By Doug Isenberg, Attorney & Founder of The GigaLaw Firm – Learn more by visiting The GigaLaw Firm website. Doug Isenberg also maintains a blog hereVisit Page
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Related topics: Domain Management, Domain Names, Law, UDRP
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