Confusing the Similarity of Trademark Law in Domain Name Disputes

29 Pages Posted: 25 Jun 2019

See all articles by Christine Haight Farley

Christine Haight Farley

American University - Washington College of Law

Date Written: June 13, 2019

Abstract

This article anticipates doctrinal disorder in domain name disputes as a result of the new generic top-level domains (gTLDs). In the course of the intense and prolonged debate over the possibility of new gTLDs, no one seems to have focused on the conspicuous fact that domain name disputes incorporating new gTLDs will be markedly different from the first-generation domain name disputes under previous gTLDs. Now second-generation disputes will have the added feature of the domain name having a suffix that will likely be a generic word, geographic term, or trademark. This addition is significant. Rather than disputes over mcdonalds.com, we will have disputes over mcdonalds.ancestry. Before these new gTLDs, Uniform Dispute Resolution Procedure (UDRP) panels have routinely ignored the gTLD portion of the domain concluding that the suffix is inconsequential to their determinations of confusing similarity. This approach has already changed. While this change may seem trivial especially in a non-precedential system, the consequence of this change may be profound for trademark owners’ rights on the internet and portend a fundamental shift in how trademarks will be called upon to pick winners and losers in this new land grab.

Keywords: trademark law, domain names, UDRP, ICANN, confusing similarity, new gTLDs, likelihood of confusion, ACPA, WIPO

Suggested Citation

Farley, Christine Haight, Confusing the Similarity of Trademark Law in Domain Name Disputes (June 13, 2019). 52 Akron Law Review 657 (2019). Available at SSRN: https://ssrn.com/abstract=3403744

Christine Haight Farley (Contact Author)

American University - Washington College of Law ( email )

4300 Nebraska Avenue, NW
Washington, DC 20016
United States
202-274-4171 (Phone)
202-274-0830 (Fax)

HOME PAGE: http://wcl.american.edu/fac/farley

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