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2011 ccTLD UDRP Cases at WIPO

Elliot Silver
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12

With .CO domain names now available to register for almost a year, I did some research on the number of UDRP cases for ccTLD domain names filed at the World Intellectual Property Organization so far in 2011. These numbers don’t reflect the actual number of domain names, but just the number of cases filed (doesn’t differ by much but pointing it out).

On forums, my blog, and elsewhere, I read people’s comments about how .CO domain names would make for a field day for trademark and IP attorneys, and I did a brief analysis to see if this assumption is true to date, at least in terms of the number of UDRP filings so far in 2011 at WIPO.

Based only on assumptions, one would be likely to assume that there would be hundreds of UDRP filings because .CO is so close to .com. One might also assume that .CO would have far more UDRP filings than every other extension. While .CO did have more UDRP filings than almost all other ccTLDs that are listed at WIPO, I was personally surprised to see that .NL has the most UDRP filings in 2011. In my opinion, this assumption is proven to be wrong, at least so far.

One thing you’ll note is that not all ccTLDs are listed below. A number of popular ccTLD registries have their own dispute policies, such as .CA’s CDRP or Nominet’s DRS (.co.uk) as examples.

ccTLD UDRP filings in 2011 at WIPO:

  • .AE – 0
  • .AG – 0
  • .AM – 0
  • .AS – 0
  • .AU – 16
  • .BR – 1
  • .BZ – 0
  • .CC – 3
  • .CD – 0
  • .CH – 10
  • .CO – 37
  • .CV – 0
  • .CY – 0
  • .DO – 1
  • .EC – 0
  • .ES – 31
  • .FJ – 1
  • .FR – 17
  • .GT – 0
  • .IE – 2
  • .IR – 1
  • .KY – 1
  • .LA – 0
  • .LC – 0
  • .LI – 0
  • .MA – 0
  • .ME – 5
  • .MX – 19
  • .NL – 44
  • .NU – 1
  • .PA – o
  • .PE – 1
  • .PH – 3
  • .RO – 5
  • .SC – 1
  • .SO – 1
  • .TK – 0
  • .TM – o
  • .TV – 6
  • .VE – 1
  • .WS – 1

First UDRP Win for .CO Owner

Elliot Silver
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9

A UDRP was filed for  Champagne.CO by Comité Interprofessionnel du vin de Champagne of Épernay, France, and the complaint was denied by the sole panelist. I believe this marks the first successful defense of a .CO domain name in a UDRP. Not only is champagne the popular sparkling wine, but it’s also a  region in France where the grapes for said wine are grown.

One reason the respondent one appears to be because the name is geographical in nature. The panelist referred to the WIPO Final Report on the First Domain Name Process and the Second Domain Name Process to determine that “geographical indications, as such, remain outside the scope of the Policy.” Personally, I feel even more comfortable now with my Bahamas.CO website.

The panelist further discusses champagne, the drink, vs. Champagne the region:

In this case, the Panel is not satisfied that the Complainant has shown that its rights in the expression “Champagne” constitute an unregistered trademark right of the kind that would satisfy paragraph 4(a)(i) of the Policy. First, the Panel notes that it is generally accepted that, to be a trademark, a sign must be capable of distinguishing the goods or services of an individual undertaking from those of other undertakings. It seems to this Panel that a geographical indication  per se does not distinguish the wine of one champagne producer from the wine of another, and so does not fulfill the fundamental function of a trademark of distinguishing the goods or services of one undertaking from those of other undertakings. A geographical indication is essentially designed to achieve a somewhat different purpose, namely to protect the producers of a particular region from loss caused by traders wrongfully applying that identifier to goods which have not been produced in the particular region, thereby appropriating to themselves the goodwill arising out of the reputation for quality which the producers of the protected products have built up. It seems to this Panel that geographical indications speak fundamentally of the quality and reputation of the goods produced according to certain standards in a specific geographic area, but not of any particular or individual trade source as such.”

Although it was unnecessary at the end, the panelist did discuss whether the respondent had registered the domain name in bad faith and/or had used it in bad faith:

“However the Complainant has not alleged that the Respondent’s intention was to sell, rent, or otherwise transfer the Domain Name to the Complainant or to a competitor of the Complainant – just that the Respondent’s primary intention was to rent, sell, or otherwise transfer the Domain Name to a third party. And even if the Complainant had said that the Respondent’s intention was to sell, rent, or otherwise transfer the Domain Name to the Complainant at a profit, the Panel has found that the Complainant is not in fact “the owner of the trademark or service mark”, as those words are used in paragraph 4(b)(i). The Complainant’s allegations therefore do not bring it within paragraph 4(b)(i) of the Policy, and the Complainant has not specified any other ground on which the Complainant is said to have been guilty of bad faith registration and use of the Domain Name. Trading in domain names is not per se contrary to the Policy (see, for example, Media General Communications Inc., cited by the Respondent).”

This is a very in-depth decision, and I recommend that you check it out when you have a chance since I have not adequately analyzed the decision in this post.

Registrars: Post .CO Transfer Coupon Codes

Elliot Silver
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54

Over one million .CO domain names have been sold to date in less than a year, which is a remarkable accomplishment for the .CO Registry. .CO domain names were first available to the general public last July, and of course that means there are going to be hundreds of thousands of them up for renewal in the next four to six weeks.

While many domain registrars offered hefty discounts on .CO domain registrations, those special promotions are limited to new registrations and not renewals or transfers. As a result, many domain owners will face the decision of whether to renew at possible double the initial registration fee or whether to let some of their .CO domain names expire.

That being said, I believe there’s an opportunity for a domain registrar or two to earn a larger .CO market share. I recommend that they offer special transfer coupon codes on .CO domain names when done in bulk (to avoid dealing with customer service issues that one-off customers might cause). Make an even better offer when customers transfer and add two or more additional years to

This post may seem a bit self serving, but please keep in mind I have about 10 .CO domain names right now and likely won’t benefit much from it. I do think some readers of my blog might benefit though.

What gTLD Would You Want to Own?

Elliot Silver
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41

Talks about the new gTLD domain extensions appear to be ongoing in Singapore, and I would expect that we’ll soon know whether they are going to be approved at this ICANN meeting. When the approval is eventually given, I believe there are going to be dozens of applications for gTLDs such as .nyc, .insure, .eco, .vegas, and many others.

Whether many or most of the new gTLD domain names will be available for sale to the general public or simply used by the companies that operate them is something that is an unknown. Companies awarded gTLDs after the expensive application process will likely have that choice and can make their own business decision about how to sell, market, and use their new domain extensions.

We do know that the .CO Registry is having considerable success selling .CO domain names. That can be attributed to strong marketing efforts undertaken by the registry. Some applicants will surely try to emulate this, while others may decide to keep and utilize the domain names for themselves or their company.

All that being said, if you could own and operate a gTLD, which extension would you choose? I would probably choose something like .insure or possibly a .geographic extension. The .insure would be a choice if search engines are kind to new gTLD and .geographic for consumer adoption since businesses in that city would likely purchase their domain names if they had the opportunity.

So… which gTLD would you want to own?

Bahamas.CO Nominated for Bulby Award

Elliot Silver
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23

I just received word that my website, Bahamas.CO, has been nominated for a Bulby Award for Best Content on a .CO web address. I put quite a bit of time and effort into researching and writing articles for the site, and it’s a cool honor. There are a number of other categories for the Bulby Awards, and you can see all the nominees at Bulbys.CO, where you can vote for Bahamas.CO!

Congrats and good luck to the nominees.

“In less than a year, over a million new ideas have been registered using a .CO web address. To celebrate, our UNDER THE BULB campaign will offer a closer look at the creativity and ingenuity of our community by recognizing the individuals behind the ideas and companies on .CO. At the heart of our effort will be a worldwide invitation to vote for our inaugural Bulby Awards.

These awards are celebrating the trailblazers, day-dreamers, innovators and insomniac entrepreneurs that are helping to create the .CO global community. We want your fans, followers and voters to say “I wish I would have thought of that!” show their support of your work and cast their vote for you.

As a nominee, you’ll get prime real estate on the Bulby Awards homepage, www.bulbys.co, where your fans and friends can vote for BAHAMAS.CO as the BEST CONTENT on a .CO web address.”

Breaking: .CO Hits 1 Million Registrations

Elliot Silver
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27

There was some confusion last month when a Colombia-based reporter wrote an article that stated the .CO Registry had hit 1 million registrations in less than a year. That news was quickly refuted by the Registry, although rumors that they were close persisted.  The Registry hadn’t provided an update since it hit 600,000 registrations.

I personally believed that they would hit 1 million registrations before this summer, and I even bet Rob Sequin this would happen, with proceeds of our bet going to charity. It looks like I was right.

This morning, the .CO Registry announced that it has officially reached 1 million registered domain names registered. This is very positive news for the Registry and its registrants, especially with aftermarket sales seeming to pick up of late (according to Sedo). It has been undeniably a great year for the .CO Registry.

My congratulations go out to the .CO Registry team and its marketing team at the Pappas Group.

Press Release:

.CO Internet S.A.S. (www.Opportunity.CO), the official registry operator for the .CO domain, announced today that it has reached the landmark one millionth .CO domain name registration. Less than one year from the global launch of .CO in July of 2010, individuals, organizations and businesses in more than 200 countries have registered .CO web addresses.

“Entrepreneurs and innovative businesses around the globe are adopting .CO web addresses at an unprecedented pace, way beyond my initial expectations,” said Juan Diego Calle, CEO of .CO Internet. “To hit this milestone in less than a year is a great testament to the hard work and dedication of our team – and especially to the foresight of all of those who believed in .CO from the very beginning. From our retail and business partners; to the trademark and domain communities; to all the people, businesses and brands who are building their futures on .CO – we owe you a million thanks!”

To celebrate the innovators, entrepreneurs and trailblazers who are turning their biggest hopes, dreams, and aspirations into realities on the .CO domain, .CO Internet has commissioned a series of short films called “Under the Bulb,” which will premier live at a private event to be held on June 9th during Internet Week in New York City. Under the Bulb tells the stories of the people behind the growth of .CO. Each inspiring two-minute film captures life from the time the big “light-bulb moment” first strikes – through the time their ideas are brought to life.

“From startup to Super Bowl in seven months flat, we are a company of entrepreneurs,” said Lori Anne Wardi, Director of Global Communications of the .CO Registry. “Under the Bulb is our way of honoring the fact that behind each of these one million domain registrations, are one million singular ideas with the potential to change the world.” You can get an early preview of Under the Bulb right now at www.UnderTheBulb.CO.

.CO is the fastest growing new global domain name in modern history. “Huge, global brands, like Twitter, Amazon and Overstock, who are early adopters in leveraging the .CO platform, are helping to bring massive mainstream awareness and adoption to .CO,” says Naval Ravikant, Founder of Angel List, the world’s leading website where angel investors scout for promising startup investments, located at www.Angel.CO.

The move by Overstock.com, in particular, to boldly rebrand the company internationally as O.CO, and to feature O.CO prominently in all of its key television ads, continues to generate incredible global interest and demand for .CO domain names. Overstock Company President, Jonathan Johnson, has advised that we should “look for another big O.CO announcement to be made on Monday, June 6th.”

With registrations spread across every continent, customer penetration is currently greatest in North America (which accounts for approximately 50% of .CO domain registrations), and throughout Europe, (which accounts for approximately 25% of registrations). With over 2 billion Internet users around the world, and an increasing demand for short, memorable, globally credible, domain names – the .CO Registry expects the rapid growth curve for .CO to continue over the next three to five years, with the greatest opportunities for expansion being found in the key developing regions of Asia and Latin America.

Interestingly, the one millionth domain name was registered at GoDaddy.com, which is the largest retailer of .CO domain names globally.

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