WIPO panels usually do not take into consideration top – level suffixes such as .com or .fr. Yet in the present case, the Panel found that the .bike domain was equally relevant, not to assess the similarity between the disputed domain name and the trademark, but because it “describes a core product of the Complainant”, namely bikes. The Panel found 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.”
This is however not the first time that such an approach has been used. The registrant of the domain name <tes.co> was found to be in violation of the trademark rights of Tesco, notwithstanding the dot between “tes” and “co.”
The Panel found that the three requirements for a successful UDRP complaint were satisfied, namely: the disputed domain name is identical or confusingly similar to the trademark, the registrant has no rights or legitimate interests in respect of the disputed domain name and the disputed domain name has been registered and is being used in bad faith. In the present case, both the reasoning and the decision of the Panel appear to be entirely justified.
With the arrival of new gTLD domain names on the market, cybersquatters are rushing to register the domain names of reputable brands. A few days after.clothing was made available, the domain names <adidas.clothing>, <burberry.clothing> and <tommyhilfiger.clothing> had all been registered.
Based on the arrival of hundreds of new suffixes, this decision was long overdue and must be welcomed. This decision will be useful to fight against cybersquatting. The general enthusiasm for the opportunities offered by the new suffixes must not leave room for cybersquatting which would be detrimental to the rights of trademark owners.
Dreyfus & associés specializes in disputes regarding domain names. For more information, feel free to contact us.