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 “catchy†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 name†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 ‘.me’ suffix.†What the Panel meant by “appropriate cases†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 “left†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.
LOL….I just love this industry.
Somebody should write a book and call it “Domain Pissing Wars…. The Chronicals of Internet Naming Madness”.
Reason #1001 to stick with dotCom or a ccTLD.
LOL I meant to say dotCom or a legacy TLD.
Great analysis, Karen!
This is bad for all domains hacks, isn’t it?
Does http://cr.yp.to/ have to worry about http://crypto.com?
Which would win?
On that same note, wouldn’t it have been a good idea for the owner of Project.ME to try to get a trademark and sue the german company preemptively? 🙂
These panels love to make up the rules as they go along. Unbelievable!
Hi Jorge, “this is bad for all domain hacks, isn’t it? You bet. That’s why it gives another basis for trademark holders to grab those types of domain names.
The cr.yp.to versus crypto.com situation is unique in that the operator of crypto.com appears to be an academic site, so it’s unlikely there would ever be a domain dispute brought here. There’s no money to be made here.
“On that same note, wouldn’t it have been a good idea for the owner of Project.Me to try to get a trademark and sue the german company preemptively?” Most likely, the registrant of Project.Me did not even know about the German trademark holders. The WIPO Panel ultimately held no bad-faith registration because the trademark holders couldn’t prove that Mr. Lin was aware of them. Had Mr. Lin hired an attorney like me to conduct a trademark search before he bid on the Project.Me domain name I would have warned him of the then-pending trademark application in Germany and advised him that he might be taking his chances by registering the domain name, but then again I would have looked at the trademark to the left of the dot and concluded that most likely he was not infringing on anyone’s rights. Now that this decision has come down, I would have advised him NOT to register the domain name. I think what saved him was that “Project” is a commonly-used word and the Panel even acknowledged that the circumstances of this particular case did not present an instance of bad faith registration under ICANN Policy.
icannhascheez.burger – LOL!
Or http://icannhascheezburger.com <= This site changes etrees every few days – check it out!
I am not sure who will consider this decision ‘bad’ and who will consider it ‘good,’ since most of the domains consist of two or more generic words. It is very appetizing for those with deep pockets to split the two words by a dot, and after the dot create a new ccTLD extension. With the approval of ICANN that anyone can create his own extension, this UDRP panel has created a headache to those who are planning to create their own extension to sell a few domain names at a prime price consisting of one dictionary word plus the ccTLD. So if you are planning to create ccTLD .next extension, be aware that domains.next could be claimed by the guy who own the TLD DomainsNext.com. I believe this is a very good and important decision for all of the little guys.
Ahh… Everything old is new again.
This “new” idea was proposed in one of the earliest disputes ever – Wipo D2000-0008
http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0008.html
The mark was “SIXNET” and one of the domains was Six.net. The panel found for the Respondent on other grounds, but noted:
“5.4 The Complainant asserts that confusing similarity exists between its trade mark “SIXNET” as registered in the United States and Canada and the domain names “SIXNET.COM” and “SIX.NET”. The Respondent denies this on the basis that only the word “SIX” could be protected by a trade mark and that .NET is merely the classification of the purpose for which the domain name is being used. The Panel cannot accept the Respondents argument. The Respondents domain names are clearly confusingly similar to the Complainants trade marks “SIXNET”.”
So.. this idea has been around for a while.
Great to see a guest writer on DNW. Good article.
@David, I usually agree with you, but that’s a poor excuse not to “entertain” the idea of using SLD’s. No disrespect intended.
That’s very interesting, John, but subsequent Panels cite this case for the old proposition that identical/confusing similarity looks to the left of the dot. This most recent decision is quite disturbing because it explicitly acknowledges the departure from the long-standing rule and the decision is written as if the Panel wants to set new precedent here. With the advent of the gTLDs the prospect of this new approach to analyzing the first prong has the potential of wreaking havoc on lawyers and domainers alike. Not pretty.
@ Karen
Where did you learn to box so well? You just knocked Berryhill out with your reply. Watch out, there’s a new legal voice making some good sense here. Name: Karen Bernstein
Berryhill’s comment: “Ahh… Everything old is new again.” is moot… his report proved the point that the RESPONDENT WON, but the “recent” approach by ICANN is NEW. But maybe John was right in saying “everything old is NEW again” which is what Ms Bernstein was saying originally.
Stephen,
Karen’s been around for a while and has long been a good attorney.
The point is not whether the Respondent won on legitimate interests or on bad faith, since in both cases the Respondent won. The point is that confusing similarity was found in both instances on the basis of including the TLD.
Yes, subsequent panels do cite it for a proposition that wasn’t found in the actual decision, as the panel did decide that “six.net” was identical or confusingly similar to “SIXNET”.
Johnny-B
Thanks for making that more clear. It says a lot about domainers walking through a minefield with their investments in any particular domain. My own domain investments never took the extension into consideration for TM issues. I reviewed my list and I don’t think I’ve crossed that lake of thin ice, but I’d suggest that this topic be considered as one of the many legal issues to consider in purchasing a domain name.
I appreciate your answer. Cheers
I personally hope that the .me domain value remains low so that normal people like myself can get some very brandable and recognizable names for cheap and make fun websites like you could at the dawn of the internet. Everyday peeps! register .me domains and make fun websites before domainers start making it harder by sitting on them! Their are tons of great ones left!