I could have saved this complainant some money.
Here’s an easy way to waste a few thousand bucks: file a UDRP against infringement on a subdomain.
This is easily one of the weirdest claims I’ve seen in a while and it involved the domain names windoows.net and windooows.com. The domains are clearly typos of the term “windows”, although they are used as lead gen sites for house windows, not Microsoft Windows. And it wasn’t Microsoft that filed the complaint; it was Comfort Window Co., Inc.
It gets weirder. Comfort Window argued that the domain owner had set up web sites as comfort.windoows.net and comfort.windooows.com, and this amounted to cybersquatting. In fact, it argued it was typosquatting. I’ve seen typosquatting claims based on domains people didn’t own, but this takes it to a whole new level.
(For its part, the respondent denied that these subdomains existed.)
Here’s how panelist Linda simply explained the problem to Comfort Windows:
The “domain names” comfort.windoows.net and comfort.windooows.com are not domain names, but subdomain names. A subdomain is a domain that is part of a larger domain. For example, johndoe.example.com and janedoe.example.com are subdomains of the
domain. The UDRP rules do not apply to subdomain names. In order for the UDRP Policy to apply, there must be evidence that these subdomains are registered with a registrar.
Mike,
The “use” issue is not as strange as it may appear, although absent seeing the complaint I cannot say if it was argued correctly. One could argue that, assuming the domain holder did create subdomains, it constituted a “use” of the domain. The more difficult hurdle for the complainant is to show that the “domain name” is identical or confusingly similar to the asserted trademark. IMO, this should not fly because the domain name is just that, excluding page references (right of the extension) and subdomains (left of the domain). However, I have seen stranger things come out of UDRP panel deliberations (and=or, Section 2 is a representation impacting bad faith, renewals are registrations, supplemental trademarks are trademarks, etc).
I think if it is argued properly it could be valid complaint under some circumstances.
If a company used ExampleExample.com and you go out and register Example.com for the purpose of setting up Example.Example.com (called “leakage” by some) and you set up infringing content.
Even if the UDRP complaint does not fly it could end up in court. While the defendant was able to defend the bogus lawsuit filed by Domain Tools that involved Mr. Keating, if you do this 3rd level trick and find yourself in a legitmate lawsuit that may cost you.
A French court once ruled that jeunes.paris.fr was confusingly similar to the trademark JEUNES A PARIS. An example of how the addition of a subdomain can lead to trademark issues.