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Combining Second Level Domain and Top Level Suffix

The following was originally published as a guest blog on Neil Brown’s website, Domain Times on December 15, 2013.

The suffix to the right of the dot, whether gTLD or country code, has no source indicating significance, but is a functional necessity panels generally disregard in comparing the second level domain with the trademark. That does not mean that in all instances the suffix is only a functional element; it could also be a grammatical or morphological element. It occasionally happens that the second level domain and suffix combined is either identical or confusingly similar to complainant’s trademark. In these instances, the dot is no barrier to combination and can be ignored. The issue of reading across the dot is illustrated in several cases in the generation of gTLDs composed of abbreviations (“.com”, “.net”, “.org” etc.) and country code suffixes which are two letter strings. But reading across the dot could become a factor in the next generation of full word suffixes which are currently being reviewed and in many cases objected to through the “legal rights objection” procedure administered by WIPO. The designated acronym for the procedure is LRO.

Up to now, country code suffixes, dot tv (Tuvalu) and dot me (Montenegro) have played a larger role in establishing precedent for reading across the dot. The latest illustration involves dot co (Columbia). TESCO is a well-known brand in the supermarket industry; Respondent registered <tes.co>, Tesco Stores Limited v. Mat Feakins, DCO2013-0017 (WIPO October 4, 2013). Complainant argued that the second level and the functional suffix should be combined and the dot ignored. The Respondent countered that this is wrong headed because that is not the way “Internet users look at and understand domain names … [or] how search engines analyse domain names – they separate the gTLD from the second level domain.” Respondent further argued that

the gTLD suffix should be ignored for comparison purposes, and that the overwhelming body of authority relies on analysing only the second level domain or their equivalent third level domain (where the gTLD is in two parts, such as “co.uk” or “com.au”). In other words, the Respondent says that the “.co” should be ignored and only the domain at the second level i.e. “tes”, compared against the Complainant’s marks.

The 3-Member Panel (that included the Hon. Neil Brown, QC who created this website) unanimously rejected Respondent’s argument. The likelihood of a “tes-co” is rare of course; in fact, there are no more than a handful of examples in the 40,000 or more disputes recorded in the databases of all the providers since UDRP’s inception in 2009, but ICANN’s pipeline includes suffixes formed from dictionary words. Such is the concern, that ICANN established a pre-launch procedure for trademark owners to object to proposed suffixes, and although very few objections have been upheld rejection is an unlikely predictor of infringement once the suffixes become available and registrants connect them to second level compositions.

Generally, abbreviated first generation suffixes are ignored for the reason that in the overwhelming number of cases comparison need go no further than the second level choice. It is rare that a dot com, dot org or dot net suffix in combination with the second level domain will spell out a source indicating sign, but it is not unheard of and may become a problem with the full word TLDs in ICANN’s pipeline. The WIPO Overview at paragraph states that “[…] The 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]. This is illustrated in a 3-member Panel decision involving a .com domain name, BookIt.com, Inc. v. PrivacyProtect.org / ICS INC., D2013-0775 (WIPO June 26, 2013). In BookIt.com, Complainant owns BOOKIT.COM; Respondent registered <extranetbookit.com>. If the suffix were ignored (so Respondent argues) “exranetbookit” could not be confusingly similar to the trademark; and similarity by itself does not satisfy the requirement. The Panel in BookIt.com notes that

one must ask whether the generic top level domain (gTLD) suffix ‘.com’ can be claimed to be a part of the disputed domain name per se. As mentioned, Complainant has rights to the mark BOOKIT.COM, but not necessarily to the mark BOOKIT. The question is thus whether the Panel must take into account the generic TLD ‘.com’ when considering the issue of identity or confusing similarity of the disputed domain name to Complainant’s mark.

The likelihood of a combination with a country code forming a signifier is moderately more likely than with generation of abbreviated gTLDs. Although the Tesco Stores case is the first with a dot co, there are examples of other country codes where the “top-level suffix … itself form[s] part of the relevant trademark.” For example, in Koninklijke Philips Electronics N.V. v. Alan Horswill, DTV2002-0004 (WIPO July 30, 2002) the Panel pointed out that “[w]hilst it is recognized that the gtld, used for a domain name in combination with a mark of the Complainant, cannot be taken into consideration as an element which would exclude or diminish confusing similarity, in the present case the [country code] ‘tv’ even increases the confusing similarity, as users will generally not understand it as reference to Tuvalu.” Respondent’s choice of domain names were (<buyaphilips.tv> and <widescreenphilips.tv>).

In a more recent dot tv case, Channel Television Limited v. Legacy Fund LLC / Protected Domain Services Customer ID: R-3108040, DTV2011-0008 (WIPO October 18, 2011) (CHANNEL TELEVISION and <channel.tv> the Panel found that there was confusing similarly, but on the penultimate question of right or legitimate interest Respondent rebutted Complainant’s prima facie case: “Respondent has made the plausible claim that it was legitimately engaging the secondary market for domain names in ignorance of the Complainant’s business.” In Koninklijke Philips Electronics, Complainant proved both the penultimate and ultimate claims that Respondent had registered and was using the domain name to divert to adult oriented websites.

With the new full word top level domains there is an initial pre-launch procedure that allows trademark owners to object to applicant’s choice of suffix. Of all the LRO objections thus far less than a handful have been upheld. However, in one objection, The DirecTV Group Inc. v. Dish DBS Corporation, LRO2013-0005 (WIPO July 29, 2013) the 3-member Panel found that “[o]n the record before it [i.e. proof that the parties are direct competitors] … unanimously conclude[d] that Respondent likely chose the <.direct> string for the sole purpose of disrupting the business of Objector.” The Panel gave as a possible abusive registration the following example: <television.direct>, which reading across the dot would be confusingly similar to DIRECTV.

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