Trademark practitioners should pay close attention to a recent WIPO decision which could set a precedent on the ‘identical or confusingly similar’ element in domain name disputes
In deciding whether a disputed domain name is confusingly similar to a party’s trademark, a recent World Intellectual Property Organization (WIPO) domain dispute arbitration decision may set the stage for future panels and have a direct impact on how brand owners approach trademark rights enforcement and defence in litigating domain disputes.
Project.me GmbH v Lin (WIPO Case DME2009-0008, November 11 2009) involved an iPhone application developer that holds a German trademark registration for PROJECT ME. The developer brought a WIPO domain dispute proceeding for transfer of the disputed domain name, ‘Project.Me’.
The respondent, a professional domainer, had registered ‘Project.Me’ during the ‘.me’ landrush, which pre-dated the complainant’s filing of its German trademark application. The case was decided by a three-member WIPO arbitration panel, which ultimately denied transfer of the domain name, holding that there was no bad-faith registration.
In analyzing the first prong of the Internet Corporation for Assigned Names and Numbers (ICANN) rules governing domain disputes – that is, whether the trademarked name and the disputed domain name were identical or confusingly similar – the panel departed from well-established trademark and Uniform Domain Name Dispute Resolution Policy (UDRP) precedent, and included not only the trademarked name, but also the ‘.me’ country-code top- level domain (ccTLD) in its analysis.
The panel’s rationale on this element was based on the ‘.me’ registrar’s own sales literature, which encouraged users to capitalize on the ‘.me’ extension with “catchy” domain names such as ‘contact.me’, ‘drive.me’ or ‘fly.me’. The WIPO panel stated that it could not “ignore the commercial reality that, in the .me domain name space, the ccTLDidentifier is likely to be a key part of a domain name”, and that “in appropriate cases [a decision may] be based on a consideration of the domain name as a whole – that is, of the domain name including the ‘.me’ suffix”.
What ‘appropriate cases’ means is subject to interpretation. In light of Project.Me, trademark owners may have a better chance of winning transfer of a disputed domain name if similar circumstances exist. For domainers, it would be in their interests to include the top-level domain (TLD) and ccTLD in trademark clearance searching to determine whether a domain name may be confusingly similar.
But will Project.Me just be lost inobscurity? The decision certainly represents a significant departure from established trademark examination procedure in at least the United States and the European Union – namely, that in analyzing a trademark application the TLD and/or ccTLD are to be ignored because they are not capable of functioning as a trademark.
That said, how new the Project.Me panel’s approach on the first prong of the ICANN rules is can also be debated. During the early days of UDRP proceedings, two decisions touched on similar issues. A single panellist in Digitronics Inventioneering Corporation v @Six.Net Registered (WIPO D2000-0008, February 3 2000) determined that the disputed ‘Six.Net’ domain name was identical to the complainant’s SIXNET trademark and ordered the transfer of the domain name.
However, only one other panel applied the same principle after this decision. Vlaamse Media Maatschappij v Barry van der Auwera (WIPO DTV2001-0022, December 3 2001) involved the disputed domain name ‘Jim.Tv’ and was also decided by one panellist.
The complainant applied for the mark JIM-TV in Benelux for a “multi-media project” and requested the transfer of Jim.Tv’. Although the panellist included the ‘.tv’ ccTLD in his confusingly similar analysis, his application of the facts differed, andthere was no mention of the Project.Me decision. Instead he determined that even though ‘.tv’ is the ccTLD for the country of Tuvalu, “it is primarily marketed to and used by companies which aim at the television watching public, and the relevant public in the Benelux will most likely read the suffix as the abbreviation of the word ‘television’ and consider the domain name to refer to a broadcasting station or tv programme”.
The panelist also considered the fame of JIM-TV, as it had other registered trademarks for television media services. Accordingly, he determined that the public would “no doubt believe that the domain name refers to complainant’s television channel”, and that since “[t]he (Dutch-speaking) Belgian public confronted with the domain name will expect the domain name to belong to, or be operated by complainant, the disputed domain name is confusingly similar to complainant’s trademark”. The panel also took into consideration that the mark JIM-TV was distinctive.
Now that the Project.Me decision has Resurrected a somewhat obscure reading of the first prong of the ICANN rules – one that had not been considered for over eight years – the question is whether trademark holders will try to convince panelists to carry forward the rationale of Project.Me when proving that disputed domain names are confusingly similar to their trademarks because the domain name plus the TLD or ccTLD forms the complainant’s trademark. Or is Project.Me instead an anomaly, since no other panels have followed this decision since the November 2009 holding? For now, the answer is ‘no’, but there could be instances where a mark holder might rely on Project.Me on the first prong. A simple example would be MTV v M.TV. Bear in mind that unlike Six.Net and Jim.Tv, in which the trademarks were deemed distinctive, Project.Me involved a Descriptive and/or generic mark that pre- dated the complainant’s trademark application, so transfer of the disputed domain name was denied.
Therefore, trademark holders should be careful when and how to rely on Project.Me. And in an abundance of caution, domainers should similarly steer clear of registering a domain name where the combination of the domain name and the TLD or ccTLD forms a distinctive trademark held by a third party that holds rights in a trademark that pre- date the domain registration.
Bernstein, Karen. “Bucking the UDRP Trend.” World Trademark Review 24 (2010): 60. Http://www.worldtrademarkreview.com. WorldTrademarkReview.com, Apr.-May 2010. Web.