A UDRP was filed at the National Arbitration Forum (NAF) against the Micro.Center domain name. The complainant in the UDRP is Micro Electronics, Inc., the company that operates on the MicroCenter.com domain name. The UDRP decision was published this morning, and the complainant won. The domain name will be transferred to the complainant unless the respondent opts to litigate.
The complainant contended that it “owns seven trademark registrations for the mark MICRO CENTER issued by the USPTO.” The respondent contended that its “domain name is “micro” and the Internet extension for this domain name is “<.center>”. Complainant does not have trademark rights to the expression “micro” or the Internet extension “<.center>”.”
From the outset, I thought this case was somewhat unique because the keyword “Micro” is very generic. I follow quite a few UDRP filings, but it’s not often that a complainant will make a case where a trademark spans the dot. For instance, I can’t imagine a hypothetical company called “MicroCom” could win a UDRP against the super high value Micro.com domain name unless something egregious was happening, and even then I would probably be quite surprised.
That being said, here are some excerpts from the panelist’s discussion:
“In the present case, the Disputed Domain Name is , and the Complainant’s Mark is MICRO CENTER. The only difference is the dot, and the dot does not create a meaningful distinction.
Previous awards that dismissed the gTLD from a Policy ¶ 4(a)(i) analysis should be interpreted considering the conditions that existed at the time each such case was decided. In the past, there were relatively few top-level domains available. Today, the number of available top-level domains has expanded dramatically, and the possibility now exists for a top-level domain to be an integral part of a confusing similarity. “
One of the biggest issues in this UDRP is the PPC parking links that were displayed. Apparently, some of the links on display were for competitors of the complainant. Here’s what the panelist wrote:
“Respondent argues that it is entitled to register and hold a domain name for sale. The Panel generally agrees. However, while Respondent is offering the Disputed Domain Name for sale, the Disputed Domain Name (it being confusingly similar to Complainant’s Mark) cannot be used to resolve to a website on which is presented active hyperlinks to Complainant’s competitors.”
My takeaway from the UDRP is that if a trademark spans the dot in a domain name and it is parked with PPC links, the registrant needs to be extra careful to ensure the PPC links are not infringing.
I think people who register the new gTLD domain names should have a look at the decision to understand that an argument can successfully be made about a trademark spanning the dot.