The Strength of Top-Level Domains in UDRP Decisions

By Doug Isenberg
Doug Isenberg

Another domain name dispute decision — this one for <> — has highlighted the increasing (potential) relevance of the top-level domain (TLD) under the Uniform Domain Name Dispute Resolution Policy (UDRP).

As I have written before (see "When is the Top-Level Domain (TLD) Relevant in a Domain Name Dispute?”), the proliferation of new TLDs is having an impact on whether and how UDRP panels consider the TLD in their decisions. The traditional rule that the TLD is usually disregarded in assessing whether a disputed domain name is identical or confusingly similar to a complainant's trademark is clearly not always the case — especially now that more disputes involving TLDs other than <.com>.

The <> decision is an excellent example.

In that case, the complainant was 24 Hour Fitness USA, Inc. ("24 Hour Fitness USA"), which owns at least one U.S. trademark registration for 24 HOUR FITNESS. The complainant argued that the domain name was identical to its trademark, because the domain name "features the entire mark, merely omitting the spaces and using the FITNESS portion of the mark as a generic top-level domain ('gTLD'), which in this case increases the likelihood of confusion." The UDRP panel agreed.

Had the panel disregarded the <.fitness> TLD, it would have been forced to compare only the second-level domain (that is, "24hour") with the complainant's trademark (that is, 24 HOUR FITNESS). It's possible that the panel would have found the two not to be confusingly similar because the absence of the word "fitness" from the second-level domain could have been considered significant.

However, the UDRP panel made clear that, in this case, the TLD was important. Citing similar decisions, the panel in the <> decision said:

Complainant… contends that Respondent's <> domain name is identical to its 24 HOUR FITNESS mark. Complainant argues that Respondent's domain name merely omits the spaces and uses the FITNESS portion of Complainant's mark as a descriptive gTLD. Panels have agreed that using a gTLD that is descriptive of a complainant's business can lead to a finding of identicality and increase confusing similarity… As such, the Panel finds that <> is identical to the 24 HOUR FITNESS mark under Policy ¶ 4(a)(i).

Interestingly, this decision (and others in which the TLD has played a role) does not address the question of whether a TLD might ever be taken into account as a factor against a finding of confusing similarity — such as in hypothetical disputes that might be brought by 24 Hour Fitness USA against any of the following domain names (each of which contains an actual new gTLD): <>, <>, <>, <>, <>, <>, <> or <>.

In any event, as the <> decision makes clear, the TLD itself can be an important factor in finding confusing similarity under the UDRP — an issue that is likely to arise with increasing frequency.

By Doug Isenberg, Attorney & Founder of The GigaLaw Firm. Learn more by visiting The GigaLaw Firm website. Doug Isenberg also maintains a blog here.

Related topics: Domain Names, Law, New TLDs, UDRP