Here’s an example of a type of complaint we’ll see more often going forward.
Traditionally, UDRP panels don’t consider the top level domain as part of what makes a domain name similar to a mark in which the complainant has rights.
We can expect this to change as new top level domain names come online.
Here’s an example of how a second level domain is not similar to a complainant’s mark, but the combination of the first and second level domain are: tes.co. “TES” is not similar to TESCO, but TES.CO is much more similar.
UK grocery and retailing giant Tesco has filed a complaint with World Intellectual Property Organization over this domain name.
The domain is owned by someone in the United Kingdom who forwards the domain to a site offering solar power equipment.
I think that the introduction of new TLDs will lead to quite a bit of debate about the inclusion of first and second levels of a domain for similarity. I also think that descriptive top level domains will become a factor. For example, amazon.green would not necessarily suggest a domain is targeting Amazon.com, but amazon.book might.
See, this is why I think the introduction of the new TLDs is going to be a confusing mess for most consumers, as your Amazon example shows. I also think dot coms are going to become even more valuable as consumers revert back to what they’ve known for the past 20 years.
Apple tried to do that with appsto.re, they failed and ended up buying the domain name.
Tesco is going to fail as well.
@ Max – from what I read about the appsto.re decision, it was only refused because the complainant wasn’t in the EU and so couldn’t gain control of the domain.
We’ll have to see what evidence Tesco presents. Perhaps it has some communication with the domain owner.
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Didn’t Viacom lose the Via.com decision?
I thought that the TLD could NOT be considered part of the name in a UDRP.
Some kind of precedent should be established here, BEFORE the new TLD $h1t hits the fan.
Better to know beforehand.
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I’m not familiar with any case for Viacom on Via.com.
The point is things are changing. Even if it was typically ignored in the past, that may change in the world of lots of new TLDs.
Hey David Gruttadaurio,
I agree with your thoughts regarding the mess additional TLDs are going to create.
In my opinion, ICANN and ATTORNEYS know this, and this is probably going to help ICANN sell more speculation, registrars offer more choice, and ATTORNEYS file more UDRP disputes.
Let’s see, who runs the planet earth? Is it the people, or attorneys? Attorneys love BILLING for stupid ACPA and UDRP complaints.
So, I think these guys love it.
It’s difficult to comment about the Tesco case until a decisions is rendered because we don’t know all the facts.
However, this issue brings to the mind the guest post article I wrote on Domain Name Wire a few years back about the Project.me case: https://domainnamewire.com/2009/11/20/project-me-domain-dispute-sets-dangerous-precedent/
In that case, the Panel included the .Me string to form the words, “PROJECT ME” in reaching the conclusion that the so-called infringing domain name was confusingly similar to complainant’s purported trademark for PROJECT ME but, as you may recall, the complaint was ultimately denied because the domain registrant registered Project.me before the complainant had any trademark rights, so there was no bad faith registration. Remember, one must prove ALL three elements to prevail in a UDRP.
I agree with you that more courts and arbitration venues are going to be looking at the whole of the domain registration, so if you are planning to sink money into New gTLD domain names, it would be in your best interest to conduct a trademark search of the entire domain name plus the New gTLD string before investing.
I also believe that trademark holders have their work cut out for them as TMCH does not provide any technology that searches both the words to the left and to the right of the dot to flag potential infringing domain name registrations. What this means is that trademark holders will have to be extremely vigilant when it comes to monitoring infringing New gTLD domain registrations.
Thanks for pointing that out, Karen. I knew I had an example on DNW, but couldn’t think of it 🙂
TESCO DOT COM is clearly differnt from TES DOT CO. There is no confusing similarity.
@observer
“TESCO DOT COM is clearly differnt from TES DOT CO. There is no confusing similarity.”
yes I agree with You. And “tes” is a generic word in some language (indonesian, etc). But i wonder why don’t TESCO also chase TES.CO.UK (similar to their TESCO.CO.UK), as Those 3 parties are from UK?
If every short domainhacks are complainable (unless if the name infringes other’s trademark), then there will be no room for domain business.