201811.23

bmẉ.com (BMW), e-lẹclerc.com (E. Leclerc), порше.com (Porsche), קוקהקולה.com (Coca-Cola) et al.: Brief Overview of Internationalized Domain Names in WIPO UDRPs

BMW had to initiate a UDRP proceeding to get the domain name bmẉ.com [xn--bm-e3s.com], therefore containing the letter “w” with a diacritic dot. The respondent in the UDRP proceedings did not participate, and the decision appears relatively ordinary. However, it contains a reminder on an obvious but yet necessary legal point:
“Previous UDRP panels have considered IDNs and their Punycode translation to be equivalent. Regarding the use of the non-ASCII character “ẉ” to replace the ASCII letter “w”, the Panel notes that it is now well established that the replacement of an ASCII letter with a non-ASCII character does not prevent a finding of confusing similarity between the domain name and the trademark (see, e.g., Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / Irfan Khan, Kamran Khan, WIPO Case No. D2018-0393; WhatsApp Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2018‑1654).” (WIPO, D2018-2016, Bayerische Motoren Werke AG v. Domain Admin, Whois Privacy Corp., October 28, 2018).

More recently, the Association des Centres Distributeurs E. Leclerc had to engage in a UDRP proceeding to obtain the transfer of the domain name e-lẹclerc.com, also composed of an “e” formed with a diacritic dot (D2018-2278, Association des Centres Distributeurs E. Leclerc v. Domain Admin, Whois Privacy Corp., November 19, 2018). The domain name was transferred after the panelist adopted the same reasoning:

“The disputed domain name is identical to the Complainant’s registered mark except that it replaces the letter “e” in the Complainant’s mark with the non-ASCII character “ẹ” (i.e. an “e” with an underdot) and includes a hyphen instead of a blank space between “e” and “leclerc”.

The Panel finds it likely that many Internet users, on seeing the disputed domain name <e-lẹclerc.com>, would disregard the underdot and would find the disputed domain name confusingly similar to the Complainant’s trademark E LECLERC”.
The question of the existence of the trademark in a form derived from its translation or transliteration may be more perilous. It had been a major issue in WIPO, D2011-0100, Dr. Ing, h.c. F. Porsche AG, ca. Moniker Privacy Services / Sergey Korshunov, April 8, 2011, regarding the domain name порше.com, transliteration of the mark “Porsche” in Cyrillic, while the company Porsche had not registered its trademark in this language. In spite of this, the panelist considered, given the reputation of the brand, that the domain name had to be transferred.
“The Panel nevertheless finds that the disputed domain name is confusingly similar to the Complainant’s well-known mark. The reason for this is based on first principles. Under paragraph 4(a)(i) of the Policy, the issue is whether there is a likelihood of confusion in the mind of Internet users. As noted by the panel in Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776, the question “is simply whether the alphanumeric string comprising the disputed domain name is identical to the Complainant’s mark or sufficiently approximates it, visually or phonetically, so that the disputed domain name on its face is “confusingly similar” to the Complainant’s mark. Initial confusion by an Internet user when seeing or typing the disputed domain name is the focus of paragraph 4(a)(i).”
In this case, the disputed domain name is not visually similar or identical to the Complainant’s mark. The Complainant claims that the disputed domain name is phonetically similar to its mark. However, in the Panel’s view, it does not follow from the Complainant’s evidence that the disputed domain name transcribes the sound of its mark in Cyrillic. Is it, for example, phonetically similar in Russian to the way its mark would sound in German or English? The Complainant does not say. Regardless, the Complainant provided evidence that the disputed domain name is a transliteration of its PORSCHE mark. The Complainant’s mark is very well-known, and this is recognized in a series of prior decisions under the Policy in the Complainant’s favor (including those cited above). The number of prior cases under the Policy involving the Complainant’s mark is itself an indication that the Complainant is an attractive target for cybersquatters.
The fame of the Complainant’s mark, combined with its transliteration in the disputed domain name, suggests to the Panel that the domain name would create confusion in the minds of Internet users that might be searching for the Complainant. There was no evidence in this case that, represented in Cyrillic, the disputed domain name has any association other than with the Complainant’s mark. As such, the Panel has inferred that an ordinary Internet user reading the domain name in Cyrillic, would be likely to associate it with the Complainant’s mark. The circumstances of this case therefore indicate that Internet users would be confused about the relationship between the disputed domain name and the Complainant’s mark. Ultimately, the focus of paragraph 4(a)(i) of the Policy relates to confusion over the association of the disputed domain name with the Complainant’s mark. Phonetic or visual similarity may be factual indicators of such confusion. There may be other facts which suggest a likelihood of confusion. The Panel considers that the relevant facts of this case are suggestive of such confusion.”
In other words, Porsche succeeded for the sole reason that its trademark is well-known. That being said, this issued should be considered with caution. There may be a need to register the domain names corresponding to the translation or transliteration of the trademark into writing systems that can be strategic for the value or development of the brand.
The following sample of decisions is taken from the database of the Arbitration and Mediation Center of the World Intellectual Property Organization. The panelists most often qualified the case as cybersquatting and ordered the transfer of domain names. The rare cases of rejection find explanation in the generic or descriptive character of the trademark, which is naturally unable to prohibit the registration of the domain name.
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