Domain registrar Register.com has filed a UDRP against another ICANN-accredited domain registrar, DomainIt, for its use of Register.cc. DomainIt, which manages 22,354 domains according to RegistrarStats, currently forwards register.cc to its main web site. This is an interesting case on a couple grounds. First, it’s rare to see two ICANN-accredited registrars on opposing sides of a UDRP arbitration. Second, it’s a .cc domain, which is not a popular domain and not commonly disputed under UDRP. Is Register.com right to go after this name? Here’s what I dug up.
Register.com’s history with arbitration at National Arbitration Forum doesn’t make this a clear cut case. The company won a slam dunk case for wwwregister.com. It also won a case for a number of domains including 101register.com, webpage-register.com, and website-register.com. The panel decided these were confusingly similar, perhaps because the owner created web sites very similar to Register.com’s. But then it lost a case for ComRegister.com in 2006, as the panelist wrote “The addition of the term “com” to the beginning of Complainant’s mark is sufficient to distinguish Respondent’s comregister.com domain name from Complainant’s mark.”
This will be a difficult cybersquatting case for Register.com to win. Register has many non-infringing uses and is a very weak trademark. DomainIt can argue that it was registered for its pure generic value to describe the services it offers, which happen to be the same as Register.com.
Technorati Tags: register.com, domainit.com, register.cc, cybersquatting