New extensions: how the experts will assess the risk of confusion in UDRP proceedings

business-dreyfus-81-150x150The new domain name extensions are arriving. The waiting period was conducive to the establishment of a qualitative legal framework, as illustrated by the <tes.co> recent UDRP decision (http://www.wipo.int/amc/en/domains/search/text.jsp?case=DCO2013-0017).

 

Although related to a country code, the Colombian extension <.co>, this case has made a major contribution to the defense of brands in the new extensions.

 

The extension <.co> is the first to be used massively as a gTLD, including by the Internet’s Majors (Google with <g.co>, Yahoo! with <y.co>). Acronym of Company, Corporate, Connection, Community or also Communication, it quickly became the speculators’ perfect target. The shortage of <.com> has reinforced this trend.

 

However, most of the new domain names extensions will have a signification. As such, they are prone to increased cybersquatting activities.

 

 
The main contribution of the <tes.co> decision is to specify that the extension of a domain name can be used to assess the confusion risk with a trademark. The WIPO experts state that the dot between the radical and the suffix is irrelevant in this risk appreciation when it’s the only element of the domain name that prevents it from being identical to the defended trademark.

 

Thereby, a domain which – without the dot separating the domain name and the extension – would be identical to a trademark, generates a high-risk of confusion and would very probably be cancelled or transferred. In this case, the <tes.co> domain name was considered as similar to the TESCO trademark, de facto generator of confusion, and the domain name transfer was ordered.

 

This decision was rightly welcomed: it will better defend the rights owners in future UDRP proceedings, against cybersquatters who’ll use the new extensions.

 

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