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Panel doesn’t consider TLD in the first-ever new gTLD UDRP case

Kevin Murphy, March 17, 2014, 14:26:01 (UTC), Domain Policy

The first new gTLD domain name has been lost to a UDRP complaint.

The famous German bike maker Canyon Bicycles won canyon.bike from a registrant who said he’d bought the name — and others — in order to protect the company from cybersquatters.

The panelist in the case, WIPO’s Andrew Lothian, declined to consider the fact that the TLD was related to Canyon’s business in making his decision. Finding confusing similarity, he wrote:

The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach. However, the Panel considers that it is not necessary to do so in the present case.

Canyon had argued that the fact that it’s a .bike domain reinforced the similarity between the domain and the mark, but it’s longstanding WIPO policy that the TLD is irrelevant when determining confusing similarity.

The domain was registered under Whois privacy but, when it was lifted, Canyon looked the registrant up on social media and discovered he was very familiar with the world of bikes.

The registrant told WIPO that he’s registered Canyon’s mark “with the best of intentions”.

Apparently, he’s registered more than one famous brand in a new gTLD in the belief that the existence of the program was not wildly known, in order to transfer the domains to the mark holders.

He claimed “that many companies have been content with his actions” according to the decision.

But the fact that he’d asked for money from Canyon was — of course — enough for Lothan to find bad faith.

He also chose to use the fact that the registrant had made no attempt to remove the default Go Daddy parking page — which the registrar monetizes with PPC — as further evidence of bad faith.

The domain is to be transferred.

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Comments (6)

  1. blehblehbleh says:

    “He also chose to use the fact that the registrant had made no attempt to remove the default Go Daddy parking page — which the registrar monetizes with PPC — as further evidence of bad faith.” That’s a baseless and unacceptable argument in and of itself. Countless “legitimate” users’ domains and entire businesses are in serious jeopardy as a result of these twisted interpretations of supposed “facts”. The system is very broken.

  2. Acro says:

    I don’t understand why the panelist made the reference to the ‘consideration’, yet he didn’t take it into account. What was the point then?

    In my opinion, decisions on gTLDs should be based primarily on the keyword+gTLD combo, when the keyword is a generic without a secondary meaning.

    • Kevin Murphy says:

      Presumably because he didn’t want to set a precedent when he didn’t have to.

      • Acro says:

        So the statement was only included because gTLDs receive special treatment? If it were immaterial to the case, it should not have been included. If, on the other hand, the statement were needed, it should have been utilized for the sake of the decision.

        • John Berryhill says:

          It’s not really a “special” treatment. WIPO UDRP Case Number D2000-0008 was one of the first UDRP decisions out of the gate, and found confusing similarity between the mark “SIXNET” and the domain name SIX.NET. The case was decided for the respondent on other grounds, but it is incorrect to state that the SLD+TLD combination has not been a factor in UDRP decisions.

  3. Seems UDRP, Legal Rights Objections (LRO) and Community Objection decisions are at odds when it comes to the domain space, including new gTLD program.

    Does the gTLD to the right of the dot count or not especially if it is in a different trademark classification not related to the generic term? So is the gTLD suffix material or not?

    “The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case.”

    This is a fascinating statement when looking at LRO decisions which rejected all cases which had trademarks which were not in a class describing the generic string of services/goods. If there was exact similarity and likelihood of confusion/harm under a different class of goods/services that does not describe the string then why were they rejected the nearly all Panels?

    This applies to canyon.bike where the gTLD “.bike” was treated as generic describing “bicycles” while “canyon” was the trademark in the class of “bicycles.” So how is this different for a gTLD string whose description is contrary to the class of goods the trademark was registered in (e.g .MUSIC in the class of domain names and domain registry services)?

    The issue of UDRP and LRO decisions is given a new light of inconsistency with WIPO’s head Francis Gurry who claims there will be a likelihood of harm and confusion in the case of new gTLDs which is contrary to nearly all LRO Panelists’ assertions who disingenuously assessed there will be no harm whatsoever to the legitimate interests of the trademark holder or in the case of community objections the corresponding communities who all the risk is transferred to.

    Here are some recent quotes (http://news.yahoo.com/domain-name-revolution-could-hit-trademark-defence-un-231011348.html) from Francis Gurry, head of the World Intellectual Property Organization (WIPO):

    “We have this extraordinary expansion that is going on,” said Francis Gurry, head of the World Intellectual Property Organization (WIPO).

    “That is going to have an impact, which is likely to be significant, on trademark protection. The exact nature of the impact, we aren’t sure of at this stage, but it is likely to be significant and disruptive,” Gurry told reporters.

    “Trademark owners are very concerned about the impact that this expansion will have on branding systems,” he added.

    “The opportunity for misuse of trademarks expands exponentially,” said Gurry, noting that registering a domain name is a cheap, automatic procedure that takes a matter of seconds and does not have a filter to examine whether there is a trademark conflict.

    “That brings with it the attendant inconvenience of a much greater burden of surveillance on the part of trademark owners,” he said.

    “So presumably, their reasons for expanding relate to improvement of navigational capacity on the Internet. What we’re concerned is the side effect of the impact that that has on branding systems that are used by consumers for their interaction with commerce,” he added.

    So why is the head of WIPO’s opinion contrary to all the LRO panels even most Community Objection Panels who did not see any “likelihood of harm.” Here you have the head of WIPO and every public opinion known to man (except for some reason most “expert” Panels) saying there will be confusion, abuse and likelihood of harm as a result of new gTLDs arising from the confusion. Wasn’t this the same case with LROs?

    Will UDRPs go out of control with the new gTLDs coming out? I am pretty certain it will open a new can of worms because LRO decisions indicate that even a rightsholder with a trademark in a different class of goods/services than a generic string’s descriptive meaning is not material or should have any merit.

    Basic trademark law was thrown out of the window by WIPO Panels in LROs (who in some cases had conflicts of interests by representing Applicants in Objection cases while also being Panelists in Objection cases).

    How is UDRP different? And why were the same standards interpreted differently in LRO decisions if the opinion is so widespread about a certainty of likelihood of confusion arising from new gTLDs?

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