Case of Slots.net and Third Level Domains: Missing Piece in UDRP Coverage.
Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a dispute resolution policy to resolve disputes between domain name registrants and trademark holders. UDRP applies to disputes involving second-level domains. For example, in <website.com> “website” is second level domain and “.com” is a top-level domain.
However, there is no UDRP coverage for third-level domains. Third-level domains are domains that come before the second-level domain and are separated by a dot. For example, in <myofficial.website.com>, “myofficial” is the third-level domain. Once you own a domain name you can create multiple third level domains/subdomains. Think of subdomains as pages on your website. You see, if you have the domain <hotshoes.com> and create a subdomain <nike.hotshoes.com> , Nike will unfortunately not have a relief under the UDRP. You see the problem a brand owner can face don't you?
Decision in <slots.net>
A recent domain name dispute case of <slots.net> is a prime example of the limitations of UDRP in third-level domains. The complainant in the case was the proprietor of several trademark registrations, including PARTY SLOTS, CLEOPATRA QUEEN OF SLOTS, SLOTS PHAROAH’S FIRE, WORLD CHAMPIONSHIP OF SLOTS and GAMINATOR. Meanwhile, the disputed domain name was <slots.net> which was registered way back on May 13, 1997. The domain name redirected to “www.slots.ca” which promoted various online gaming sites.
The issue at hand was whether the complainant had a valid claim to the domain name based on their trademarks. They argued that the domain name was confusingly similar to their marks containing the word “slots,”. Additionally, the third-level domain, <gaminator.slots.net> was confusingly similar to their GAMINATOR mark.
However, the respondent pointed out that they had acquired the disputed domain name way back in 2011, and that it had changed hands numerous times before that. They also argued that there was no evidence of the complainant having or using any reputation in the word “slots” at the time of the domain name’s registration in 1997 or at the time that the respondent acquired it in 2011.
Third Level domains not considered under UDRP
The panel in the case had to consider several issues in order to make their decision. One issue was applicability of UDRP to third-level domain names. Panel noted that the UDRP is solely intended to resolve disputes between trademark owners and holders of second-level domain names, which are identical or confusingly similar to the trademarks of the right holders. The UDRP does not currently apply to third-level domains. The Panel refused to Complainant’s arguments relating to its mark GAMINATOR and <gaminator.slots.net>.
National law is rarely applied under UDRP
The Panel acknowledged that Complainant cited Austrian law for the proposition that use of a third-party trademark in a third-level domain is trademark infringement. According to established UDRP practice, reference to national law is made exceptionally. The Panel did not find any such circumstances. The Parties neither share a common nationality that would justify the import of a specific national law concept, nor were there any other circumstances that would warrant the application of national law. Panel saw no reason to depart from the principle that the UDRP governs disputes concerned with second-level domains.
Descriptive nature of <SLOTS.NET>
Regarding the substantive issues, the panel found that the disputed domain name was confusingly similar to the complainant’s marks containing the word “slots,” as it was a recognizable element of their marks. Now, I found this a bit troublesome. You see, for a domain name to be confusingly similar mark you have to do a straight forward comparison. You’ll observe that this is unlike the test of comparison under trademark law (where there is wholistic comparison). But under UDRP-
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.
So I don't see how any of complainant’s marks PARTY SLOTS, CLEOPATRA QUEEN OF SLOTS, SLOTS PHAROAH’S FIRE, WORLD CHAMPIONSHIP OF SLOTS are clearly recognizable within <slots.net>. But thankfully, Panel refused to make a finding in favour of the complainant under the first element because there was some doubt about how the disputed domain name was being used at the time of filing the complaint.
Panel also found that the “slots” was a dictionary word, and that the respondent had used it in connection with the dictionary meaning of “slots” by redirecting it to a website displaying information about online gaming, including slot machines. This did not necessarily reflect any connection to the complainant’s trademarks.
Long use = maybe not bad faith
Ultimately, the panel found that the complainant had not satisfied their burden to show that the respondent had registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. The domain name had been registered for over 25 years and that the respondent had not at any point contacted the complainant to offer the domain name for sale. The disputed domain name was used to resolve to websites at the domain names <slots.com> and <slots.ca> with content corresponding to a dictionary meaning of the term “slots” There was no evidence that Respondent targeted or even mentioned Complainant. Therefore, the panel was unable to find that the complainant had established that the respondent had registered and used the disputed domain name in bad faith.
3 Key Takeaways
What does all this mean for brand owners and IP practioners? Well, longevity of the registration of a disputed domain name can have a significant bearing on the second element and on bad faith finding. That the domain name was registered for over 25 years meant that the respondent had a stronger claim to it, as there was no evidence of bad faith registration or use.
Second, use of the trademark in a subdomain (third level domain) is not a cause of action under UDRP. And rightly so. Subdomains are created for multitude of reasons. Example, a hospitality business should be able to use the subdomain ‘booking’ in its domain <booking.website.com> without interference from BOOKING.COM.
Third, like a subdomain, UDRP does not cover email addresses. In VFS Global Services PLC v. David Killam , VFS could not take back the respondent’s domain <visasdept.com> even when the respondent was using an email <vfsglobal@visasdept.com> for phishing.
If a trademark is used in a subdomain and an email address, focus should be the respondent’s conduct and surrounding circumstances so see if its a fit case of trademark infringement/passing off. If you use UDRP subdomain or phishing email addresses, you are barking up the wrong tree.
Full Decision in <slots.net> : Novomatic AG v. DomainClip Domains Inc., WIPO Case No. D2022–4590
