WIPO: Disregard TLD in Trademark Dispute

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WIPO: Disregard TLD in Trademark Dispute

By Jaap Akkerhuis
August 02, 2009 Views: 6,575 Add Comment

There is a Dutch website which regularly publishes comments on rulings of the World Intellectual Property Organization (WIPO) Arbitration, Dutch court cases, and similar things. They have a newsletter which reports over the latest cases. It is really meant for people who are into the legal aspects of domain names. In the July “nieuwsbrief” newsletter, there was a remark (in Dutch) about a case that the top level “.nl” suffix to the name should not be considered relevant.

Apparently this is a standard practice by WIPO because in another case, Freisinger Fensterbau - Ludwig Haessler, about the name optiwin.nl that it should take into account “that the top level domain ‘.nl’ can be disregarded in assessing whether the domain name is identical or confusingly similar to trade marks in which a complainant has rights (see for example Mappy - Webhold, DomJur 2009-435), the domain name optiwin.nl is identical to complainant’s trade mark OPTIWIN (art. 2.1 sub a Regulations).”

The same “nieuwsbrief” features the “Mappy - Webhold” case

and contains the remark “For the purpose of assessing whether the domain name is identical or confusingly similar to the trademarks in which the complainant has rights, the ‘.nl’ suffix is disregarded.”

This makes me wonder whether it is really necessary to have “defensive registrations” in all Top-Level Domains (TLDs) under the sun in order to “protect the trademark” as I hear often suggested by various people.

By Jaap Akkerhuis

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