Reminder: the top level domain name matters in a UDRP
Panels will not always ignore the top level domain name in UDRP cases.
With niche top level domain names like .clothing and .plumbing now on the market, I’d like to clear up a common misconception about UDRP and whether the top level domain name should be ignored in such disputes.
Many people believe that the top level domain name is ignored by panels when it comes to confusing similarity. In other words, if the domain at issue is trademark.com, the panel will say that the mark only has to match the second level domain, not “trademark com”.
It’s true that in this exact case, the panel will usually note that the top level domain should be ignored, and will cite precedent.
Note the precedent language. The actual UDRP language says nothing about ignoring the top level domain name. The only reason most panels ignore it is because it is typically irrelevant.
Sometimes it’s not irrelevant, as with the domain hack Tes.co, in which the panel ruled that the domain name should be transferred to retailer TESCO.
The top level domain name will certainly be considered in certain types of cases going forward, and perhaps not just for confusing similarity.
The first is when the top level domain name is a topic or industry that relates to the mark holder. For example, if you register GAP.clothing, the panel is going to score a point for GAP when it files a UDRP against you, perhaps in the bad faith section. The panel might give you more benefit of the doubt if the domain is Gap.guru, because perhaps GAP stands for something else.
The second category is domain hacks similar to the tes.co case. There will be a lot more domains considered domain hacks in the future. Consider Austin.Ventures, which the venture capital firm now uses. (I once surmised that Austin Ventures would pay for the domain in Early Access Program since it’s a Donuts investor. Turns out Donuts reserved the domain for them.)
Another note on domain hacks: you won’t see a Trademark Claims notice if the second level + first level matches a trademark, only if the second level does. Trademark Claims notices don’t “span the dot”.