Micro.Center UDRP Spans the Dot

21

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.

21 COMMENTS

  1. So basically they are saying if the the domain didn’t have links on the landing page the respondent would have won even though they had a trademark.

    • I guess the respondent would still lose even if not using hyperlinks to Complainant’s competitors. That’s because the Micro Center trademark was registered in 1987 and the Micro.Center domain name was registered in 2015. The former predates the latter.

      • ”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.“

        It has EVERYTHING to do with new gTLDs.

        • The Respondent lost because his/her landing page contains PPC hyperlinks to the Complainant’s competitors, not because the domain is a new gTLD.

          Please desist from imputing the fault to new gTLDs indiscriminately.

  2. Thanks. Yet I still fail to understand why new gTLDs need to be blamed.

    If the Complainant’s trademark were Micro Com and the Respondent’s domain name were Micro.Com, we probably wouldn’t be here.

    • Who “blamed” new gTLD’s?
      I said it’s a wrong decision by the panel and the lesson is that you should avoid new gTLDs as an investment. 95% of all domain sales are .com’s, 5% are country codes and new TLD’s. If you consider yourself a domainer and you buy and register domain names in order make a profit, the math tells you to stay away from new gTLD’s. It’s that simple.

      • How the new gTLDs are selling at the moment should not be linked with the Respondent’s loss. In other words, you’re mixing two different topics and potentially misleading people into believing that the Respondent’s loss was caused by the new gTLD.

        • Misleading? I trust people can make educated decisions based on FACTS.

          Besides, the panel in this case couldn’t be any clearer:
          “The only difference is the dot, and the dot does not create a meaningful distinction.“

          You said it yourself, if the TLD would have been .com, we wouldn’t be here.

          • What I mean is that, if the TLD would have been .com, nobody would impute the Respondent’s loss to .com, and therefore we wouldn’t be here to argue.

          • Correct, because it was established policy by UDRP panels over the years that the .com part of a domain name is only a TLD and therefore can’t infringe a trademark like in the example that you made. Whereas in this case, the panel made it explicitly clear that the dot alone does not create a meaningful distinction, ergo they considered the TLD .center as an equal part of the domain which then infringes the TM of Micro Center.

          • Simply put, a UDRP panel diverted from a well established policy and decided that a dot “does not create a meaningful distinction.“ They apprently saw the left of the dot and the right of the dot as equal parts. If you don’t realize that a decision like that can have major implications for all registrants of new gTLD’s, I really can’t help you.

          • Okay. I didn’t know there is such a policy. Thanks for explaining.

            But still, I personally would not impute the fault to new gTLDs. Trademark infringement is an important issue that every domainer needs to be very careful of. In this case, it’s the Respondent’s own carelessness or lack of knowledge that caused the trademark infringement.

          • You call it “lack of knowledge” but IMO the respondent probably registered that rather odd combination with the intent to sell it to the complainant at – or even below the costs of a UDRP filing. But the company apparently decided to rather pay a panel instead of the registrant.

  3. I agree with Richard.

    My takeaway is that gTLD are a minefield laden with booby traps and all of them are destined to fail. Especially when you add the extreme likelihood that customers will accidentally send email to MicroCenter.Com instead of Micro.Center, you are begging to go out of business before you even go into business. How stupid of a business plan is that?

    • When you’re a domainer the odds are stacked against you anyway. The “luck” component is an important factor and roughly only 2% of your portfolio will sell in any given year (if priced correctly). From that money you have to pay the renewal fees of the other 98% that didn’t sell. That is when you have .com domains.
      Why make your position even less favorable by registering overpriced new gTLD’s that rarely sell? They will add to your overhead and expose you to even more legal risk because now it is established that:

      “The only difference is the dot, and the dot does not create a meaningful distinction.“

      Well, good luck.

  4. It’s funny how UDRP panelists feel a need to keep re-inventing wheels.

    The first UDRP decision to find identity or confusing similarity by looking at the entire domain name was WIPO 2000-0008, in which “six.net” was found to be confusingly similar to the mark “SIXNET”. The Complaint was denied on other grounds, but it’s fairly intuitive that something like “wal.mart” is going to found similar to a well known mark.

Leave a Reply