New Paper by Prof. Christine Haight Farley: Confusing the Similarity of Trademark Law in Domain Name Disputes
June 18, 2019
The Akron Law Review has published a new paper by PIJIP's Faculty Director, Professor Christine Haight Farley. The paper warns that a new generation of generic top-level domains incorporating full words will lead to conflicts in cases where the top-level domain is a generic word, geographic term, or trademark.
The paper is available for download on SSRN here. The full abstract follows.
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 While this change may seem trivial especially in a non-precedential system, the consequence of this change may be profound for trademark owners’ rights on the internet and portend a fundamental shift in how trademarks will be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.
