Question about UDRP ruling

[risingsuns]

I was browsing the WIPO decisions for September -- and had a question about one of the rulings. In this decision, http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0830.html, WIPO ruled in favor of the complainant in a dispute over cybercv.com. The complainant registered a trademark for "CYBER CV" in 2004 with the Spanish Patent and Trademark Center. The respondent registered the domain name in 2005. OK, I understand the panel's opinion that, "...the domain name is identical to the two Spanish trademarks referred to above and in which the Complainant has rights."

What I don't understand is this sentence, "Moreover, the Generic Top Level Domain suffix ‘. com’ in the domain name must be disregarded, for it has long been held that this addition cannot avoid the conclusion of identically or confusing similarity" Hypothetically, does that mean that if the domain name had been cybercv.us (or any country TLD besides Spain) that the complainant's case would not been as strong?

Based on the lack of reply from the respondent, I'm not sure it would have helped...

 

[DNQuest.com]

It is the same with all TLDs and ccTLDs. What they are sayng is by adding a suffix to a TM does not make unique.

In cases where the respondant does not respond, the panel stills has to go through all the procedures and take into accounts all factors involved. Unlike the courts where a defendant is found guilty by default judgement, a respondant can win a UDRP without responding.

 

[risingsuns]

So, if company ABCXYZ has registered the trademark "ABCXYZ" in Spain for use in the clothing industry and they use ABCXYZ.es for their main web site, WIPO would say that I couldn't use the domain name ABCXYZ.com for a clothing company in the U.S.?

 

[DNQuest.com]

In basic terms, yes. But you could challenge the strength of the mark (might only be regional, using your example). But if the mark is strong, you would probably lose in a UDRP.