TES.CO is confusingly similar to TESCO, and soon the top level domain will play a bigger role in domain disputes.
In July I wrote about grocery chain TESCO filing a dispute against the domain name tes.co. A decision has now been rendered.
UDRP panels typically disregard the top level domain name when it comes to determining if a domain name is confusingly similar to a trademark. If .co was ignored in this case, then TESCO would fail as they’d have to argue that TES is confusingly similar to TESCO.
But, especially in the case of possible “domain hacks”, UDRP panels have considered the top level domain in determining confusion.
That’s what happened with the three member panel for tes.co. The panel determined that Tes.co is confusingly similar to TESCO. It also found that the person who registered the domain did so in bad faith.
I’ll give Mat Feakins style points for how he defended the domain name. First, he set up an Amazon affiliate store with the name “The Entertainment Shopping Company”. Then he forwarded the domain name to his solar energy site, Solar IQ, and said TES stood for “Thermal Energy Storage” and The Energy Supply / Service Company.
The panel didn’t buy it.
Although other panels have considered the TLD in a domain hack, I believe this will be expanded further in the future.
Will a panel look at a case for apple.computer differently than one for apple.food? It would make sense for them to do so.
Kassey says
Would the decision be different if the domain had no connection with any commercial activities? Say, a purely informational site?
Andrew Allemann says
It depends on what it was about.
Joseph Peterson says
With this precedent in mind, to what extent would someone registering, say, Example.Club in 2014 be subject to a legitimate UDRP for treading on the heels of some preexisting ExampleClub.com?
Very few quality domains made possible by these new vanity extensions would not infringe on someone’s .COM. It seems arguable to me that many of the “best” fresh registrations among the new gTLDs could be automatically subject to a UDRP — a defendant in litigation from birth, so to speak.
Of course, registries have enough money to lobby against this interpretation pretty aggressively. But what’s the difference between Tesco.com versus Tes.co and ExampleClub.com versus Example.Club?
Andrew Allemann says
Can you give a good real example of this?
Colin Campbell says
Example.club is clearly different than Tes.co as Tesco as it is a unique trademark that does not encompass any common words. Although not a domain, .express decision was clear in that even though it was a trademark, it was also a common word therefore it did not get similar treatment. It will be interesting to see how a common word like diners.club gets treated by UDRP panels.
I better file a trademark for my name or else risk losing it to UDRP:)
Colin.club
Andrew Allemann says
Diners.club. That’s a good example. Obviously the panel would have to look at how it’s used. But for the “confusingly similar” part, I think it’s fair for a panel to say diners.club is confusingly similar to the Diner’s Club mark, even though the second level string is just “Diners”.