<B.MW>The Single-Letter Domain Dispute and Top-Level Domain Considerations in UDRP
In domain name disputes, top-level domains (TLDs) such as ‘.com’ , ‘.net’ are disregarded when assessing similarity. Say for example a cybersquatter registers <yourbrand.org>, then YOURBRAND will be found identical to the domain name and the ‘.org’ TLD will be ignored in this analysis. I came across decision, involving the single-character domain name <b.mw> which highlights the importance of considering all elements, even a TLD. This also appears to be shortest domain name dispute in my knowledge.
In this case, German car giant BMW filed a complaint against the owner of the domain <b.mw>, which is the country-code top-level domain (ccTLD)for Malawi. Malawi doesn't have its own domain name dispute policy but has volunteered to be governed by Uniform Domain Name Dispute Resolution Policy (UDRP). In order to succeed under UDRP, a complainant has to satisfy a three-part test-
First Element: domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
Second Element: domain name registrant has no rights or legitimate interests in the domain name; and
Third Element: domain name has been registered and is being used in bad faith.
A complainant must prove that each of these three elements are present.
The first element is a threshold test concerning a trademark owner’s standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Under the first element under UDRP , the TLD is disregarded and only the second-level domain name is compared to the trademark.
However, in the <b.mw> case, the panel ruled that the TLD ‘.mw’ should not be ignored and that the proper comparison was between the entire domain name <b.mw> and the trademark BMW . The panel reasoned-
the disputed domain name differs from the Complainant’s BMW mark only by the addition of a punctuation mark (“.”) between the “b” and “mw” in the mark. While “.mw” is the TLD, consideration of TLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity under the first element of the Policy, and the Panel finds such consideration to be appropriate in the circumstances of this case
While the panel didn’t specify under what circumstances top-level domain names should be considered, it’s clear that the registrant’s actions — registering domain names that included trademarks owned by other car companies and trying to sell the domain name for $1 million — played a role in the decision.
So, what does this mean for trademark owners? The answer is not cut and dry. The consideration of top-level domain names in UDRP cases will depend on the specific circumstances of each case. But this <b.mw> decision serves as a reminder that UDRP Panels can go beyond the second-level domain name, when evaluating the first element the UDRP.
