Another Registrant Loses UDRP Where Trademark 'Spans the Dot'

By Doug Isenberg
Doug Isenberg

Here's another example of a domain name dispute where the top-level domain (TLD) was essential to the outcome of the case — because it formed a part of the complainant's trademark: <>.

In this decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), the panel joined a short but (slowly) growing list of disputes in which the TLD plays a vital role.

These decisions contravene the longstanding but now outdated rule that a TLD "should" or even "must" be disregard in a domain name dispute, simply because the TLD is only a "technical requirement of registration." That rule has started to fade as new gTLDs appear in UDRP proceedings.

The <> decision, like some of the others that have considered the TLD to be a relevant factor, notes that the complainant's trademark "spans the dot" — that is, the trademark appears when the the second-level domain ("mr") is combined with the TLD ("green").

The <> decision even includes an interesting but ultimately irrelevant argument about the role of the dot itself, given that "Mr." is a common abbreviation for "Mister".

In comparing the respondent's domain name <> to the complainant's trademark MR GREEN (used in connection with online casinos), the panel wrote:

In these circumstances, the Panel will compare the Complainant's trademark MR GREEN to the entirety of the disputed domain name <> in the assessment of confusing similarity. In so doing, the Panel finds that the Complainant's mark is readily identifiable in the disputed domain name, taken as a whole. It should be noted that the disputed domain name is alphanumerically identical to the trademark with the exception of the addition of the dot which does nothing in the Panel's view to distinguish the mark from the disputed domain name. In the Panel's view, this leads to a finding of confusing similarity.

Other similar decisions involving new gTLDs include those for <>; <> (subject of an earlier blog post); and three involving the WE WORK trademark. Plus, at least two important decisions involving country-code domains (ccTLDs) also include trademarks that span the dot: <> and <>.

This concept of a trademark spanning the dot is now recognized in the new WIPO Overview of UDRP decisions (although that phrase is not actually used). The Overview says: "Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity."

Trademark owners and domain name registrants should be aware of the growing importance of TLDs in domain name disputes.

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