by Karen Bernstein
Have UDRP panels gone too far by setting a new standard for determining the identical or confusingly similar element in domain disputes?
In his November 13 article, Andrew Allemann reported a WIPO decision denying transfer of Project.Me (project.me GmbH v. Lin, Case No. DME2009-0008 (WIPO Nov. 11, 2009)). This article picks up where he left off.
In Lin, an Iphone app developer who owns a German trademark registration for PROJECT ME brought a WIPO domain dispute proceeding against a domainer who registered Project.Me during the .Me landrush. The case was decided by a three-member WIPO Panel. In analyzing the first prong of the ICANN Policy governing domain disputes – whether the trademarked name and the disputed domain name are identical or confusingly similar – the Panel departed radically from well-established procedure in its decision. It compared the trademarked name with the entire domain name, including the ccTLD. Indeed, the Panel’s rationale for this radical approach was based on .Me’s own sales literature, which encouraged users to capitalize on the .Me extension with “catchyâ€ domain names like Contact.Me, Drive.Me or Fly.Me. This rogue UDRP Panel actually went outside of the submitted written papers in analyzing the first prong of the ICANN Policy but then again there is nothing in the ICANN Policy prohibiting them from doing so. The WIPO panel qualified its new approach by stating that it could not “ignore the commercial reality that, in the .me domain name space, the ccTLD identifier is likely to be a key part of a domain nameâ€ and that “in appropriate cases [a decision may] be based on a consideration of the domain name as a whole – that is, of the domain name including the â€˜.me’ suffix.â€ What the Panel meant by “appropriate casesâ€ is a very broad term subject to an individual Panelist’s interpretation and is of great concern here.
In addition, what is so disturbing about this decision is that the Panel took the completely opposite approach of how previous UDRP panels analyze the identical/confusingly similar element in a domain dispute. Even US trademark law does not consider the TLD and/or ccTLD as capable of functioning as a trademark and UDRP Panels should not either. When considering whether a trade name is capable of functioning as a trademark US trademark law looks to the “leftâ€ of the dot.
So what does this all mean for the domainer? We all know that Domain investors spend their hard earned money on domain names and some hire trademark lawyers to perform trademark searches before buying domain names to make sure they are not going to be faced with paying their lawyer more money to defend domain disputes or trademark infringement lawsuits. The WIPO Panel in the Project.Me case has now made things much more complicated.
This decision could open the floodgates to future UDRP panels and opportunistic trademark holders and their lawyers using the same analysis against the domainer to prove a domain name is identical or confusingly similar. Will it now be easier for a trademark holder to win a domain dispute because a domainer registered, for example, Insure.Me? I can think of numerous instances where one could find the trademarked name and the domain name to appear to be identical by including the TLD or ccTLD in the analysis. The lesson to be learned here is that after the Project.Me decision, it would be most wise before considering investing money into the next great domain to consider the meaning of it by including its TLD or ccTLD extension. I know that after reading the WIPO decision my trademark clearance search analysis has now changed. We will have to wait and see if other panelists take the same approach under similar circumstances.
Karen Bernstein is an attorney based in Manhattan whose practice focuses on trademark, copyright, and e-commerce issues. She may be reached at (212) 339-9955 or kjb (at) karenbernsteinlaw.com.