One of the interesting points noted by the Federal Court in the .DELMONTE decision was that registry endings like .com, .net, .org, .edu… are not considered part of the “domain name” for the purposes of analyzing cybersquatting cases:

“[i]n fact,rather than look at a gTLD to determine trademark rights, the Ninth Circuit and others ignore the TLD as though it were invisible next to the second level domain name in an infringement action.” citing Image OnlineDesign, Inc. v. Core Ass’n, 120 F. Supp. 2d 870, 878 (C.D. Cal. 2000)

There are a few instances where UDRP arbitration panels have found that a registry ending can be part of the “domain name.” For example, in a UDRP decision over the domain name www.project.me, the panel explained that the .me suffix was part of the domain name: 

“[i]

n this Panel’s opinion, to ignore the ccTLD identifier in all cases when considering identicalness or similarity of a .me domain name to a trademark is to ignore the commercial reality that, in the .me domain name space, the ccTLD identifier is likely to be a key part of the domain name. Thus, it is this Panel’s view that a determination of identicalness and similarity of a .me domain name may in appropriate cases be based on a consideration of the domain name as a whole – that is, of the domain name including the ‘.me’ suffix.” project.me GmbH v. Alan Lin Case, No. DME 2009-0008 (WIPO Nov. 11, 2009). (emphasis added) 

This exception will have to be expanded in the New gTLD world. Specifically, in the New gTLD world domain names that function as both common terms and trademarks will create cybersquatting situations in some registries but not in others. This will happen frequently in the case of “arbitrary trademarks” – i.e., trademarks that are common terms used in association with unrelated goods.

For example, the trademark APPLE, owned by Apple, Inc. for computers, software, etc… is an arbitrary trademark because it is a term not normally associated with computers/software. Apple, Inc.’s rights to the trademark APPLE do not, however, prevent others from being able to use the term “apple” for trademarks related to apple farms, apple juice and similar areas of goods/services that are part of its ordinary meaning.

In the New gTLD world if the term “apple” is registered in a computer or software related registry, that will likely create the commercial impression that it is related to Apple, Inc. However use of the term “apple” in the .FARM New gTLD is probably not going to be a problem because it uses the term as part of its ordinary meaning/usage. In any case, the registry name will become an important “association” factor for the domain name as a whole.

 

 

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