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No Barrier to Reading Across the Dot with New TLDs and Trademark Infringements

Even before the introduction of new top level domains in 2014, Panels had grappled with the before and after the dot issue with country code suffixes. The traditional procedure is to compare the characters of the accused domain names with the characters of trademarks for identity or confusing similarity. But this did not exclude the possibility of reading across the dot, as noted in Paragraph 1.2 of the WIPO Overview: “[t]he applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark” [emphasis added].

Examples of TLDs forming part of relevant trademarks include <tes.co> and <minnesota.life>) which (ignoring the dot) are identical to the trademarks of those complainants; confusing similarity was found in <canyon.bike> where a dictionary word suffix is associated with the trademark owner’s business. In all these cases respondents’ fallback arguments have relied on identity or confusing similarity of characters to the left of the dot. This, of course, is nonsense. The dot is not a barrier to a finding of abusive registration. Where a dictionary word which is also a trademark (Canyon, in the example) and a word associated with the trademark owners’ business is added as a suffix (“bike”), if the whole string of characters is identical or confusingly similar to the trademark, the first element will have been established.

The point is well made in 24 Hour Fitness USA, Inc. v. veronica rosignoli / veronicareidweb design.com, A1512001653945 (Forum January 28, 2016) (24 7 FITNESS and fitness247.fitness). Reversing the 24/7 and adding a suffix that duplicates the nature of the business does not create a noninfringing name. Rather, “this Panel concludes that Respondent has registered and is using the disputed domain name in bad faith in order to take predatory advantage of Complainant’s rights in the 24 7 FITNESS mark.” The same result eluded Complainant in C-Byte Computer Systems LLC v. Trevor Biscope / Domain Administrator / C-byte Company, Inc., FA1509001639954 (Forum December 15, 2015) (<c-byte.club>, <c-byte.pw>, <c-bytes.com>, <c-byte.enterprises>, <c-byte.international>, <c-bytecompany.com>) principally because it failed to prove Respondent lacked rights or legitimate interests or registered the accused domain names in bad faith, but had it submitted the necessary proof the Panel would most likely have read across the dot.

As with all cybersquatting disputes, parties have to understand where the facts lie on the continuum that runs from identical to confusingly similar, to similar but not confusing. Credibility is particularly stretched when Respondents immediately offer the domain names for sale as in Raincat Online Services v. fluder, CAC 101125 (ADReu February 1, 2016) (AD6MEDIA and ). The gist of Respondent’s argument in this case is that “[t]he disputed domain name is neither identical nor confusingly similar to the protected mark . . . [because] [t]he ICANN rules only apply to what’s left of the dot [, and that any other reading would be] an abuse of the administrative proceeding.” For example, (he continued) “[u]nder general policies if you have a trademark on ‘Merry Christmas’ you can make a sunrise claim on MerryChristmas.Christmas but not Merry.Christmas.”

In support of its contention that it has rights or legitimate interests in domain names that are neither identical nor confusingly similar to the SLD Respondent cited ISNIC Zoetis Products, LLC, no. 1/2013 (decision written in Icelandic but no translation available) in which Respondent apparently prevailed on the “Merry Christmas” argument. The Panel in that case held that “if the suffix ‘is’ [the country code for Iceland] were viewed as part of the website name . . . it would be unavoidable to view the dot that separates the word ‘zoet’ from the suffix as a part of the website name [that is, you can’t cross the dot to form the trademark]. This leads to the conclusion that the registered trademark cannot be viewed as identical with said website name. It is thus not possible to take the view that the condition is satisfied that the website name be transferred as claimed is identical to the registered trademark. The claim of the complainant that the website name be transferred must therefore be rejected.” If this summary accurately reflects the Icelandic Panel’s decision, it cuts against the grain of UDRP jurisprudence on this issue, is utterly non-sensical, and currently rejected by the panel in Raincat Online.

The same Respondent is also challenged for registering <aspect.capital> in Aspect Capital Limited v. Fluder (aka Pierre Fluder), D2015-0475 (WIPO April 14, 2015). Here, too Respondent argued that the SLD was a dictionary word; but as the Panel explained

the Domain Name considered as a whole is virtually identical to the trademark ASPECT CAPITAL—the differences being (1) the addition of the “dot” to signify the gTLD “.capital” and (2) the omission of the spaces between the words. While (as already noted) it is usual practice to disregard the gTLD component as a functional aspect of the domain name system, in this case the combination of the gTLD with the word “aspect” naturally suggests the Complainant’s second trademark. One may argue that the addition of the “dot” to indicate the gTLD component is more significant than the omission of the spaces [the Icelandic Panel’s view] but, in the present context, it is largely as insignificant as other elements of punctuation such as spaces and hyphens.

As in Aspect Capital, the Panel in Raincat Online rejected Respondent’s reasoning as specious. The Panel accepted none of Respondent’s arguments. The characters to the left of the dot can, when the facts allow, be inseparable from the characters to the right of the dot. “There is nothing in the rules to say that it must never be taken into account where the gTLD underlines and emphasizes the confusing similarity between the domain name and the trademark. The Panel believes that in some cases, such as the present, it should be considered, especially where the presence of the new gTLD goes to make up a complete expression that is identical with a trademark.”

By Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

Information about the firm can be found on the Firm’s website at iplegalcorner.com. Mr. Levine has a litigation and counseling practice representing clients in Intellectual Property rights and management, Internet and Cyberspace issues, domain names and cybersquatting, as well as a diverse range of legal and business matters from working with client to resolve commercial disputes, to copyright and trademark counseling and registrations. He is the author of a treatise on Trademarks, Domain Names, and Cybersquatting, Domain Name Arbitration: A Practical Guide to Asserting and Defending Claims of Cybersquatting Under the Uniform Domain Name Dispute Resolution Policy. A Second Edition of the treatise was published July 2019 and is available from Amazon or from the publisher, Legal Corner Press (LCP). For inquiries to LCP write to .(JavaScript must be enabled to view this email address) or Mr. Levine at .(JavaScript must be enabled to view this email address).

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