New Top-Level Domains .BIKE .GURU and .VENTURE at the heart of UDRP procedures

business-dreyfus-81-150x150The new gTLD domain names like .HOME, .BIKE or .PARIS are emerging on the market. Some take advantage of these launches to infringe well-known trademarks and domain names with these gTLD are already subject to UDRP procedures.

 

On 5 February, the domain name <canyon.bike> has been registered by a privacy shield service at the registrar Godaddy.com.

 

The German company Canyon Bicycles GmbH has promptly filed a UDRP complaint (Uniform Domain Resolution Policy) at World Intellectual Property Organisation (WIPO). The company intends to act under its intellectual property rights as it is the holder of several Canyon trademarks since 1993.

 

This complaint is the first UDRP procedure since the introduction of the new gTLD domain names on the market. IBM has also filed two complaints concerning the domain names <ibm.guru> and <ibm.ventures>. However, it concerns the URS procedures (Uniform Rapid Suspension). Unlike the UDRP procedures, the aim is not to result to the transfer or cancellation of the domain name but simply to obtain its suspension. On 12 February, the expert of National Arbitration Forum (NAF) has favourably acceded to the request of IBM and has ordered the suspension of the two domain names.

 

More than 1000 gTLD domain names will be spread out the coming months and along with these expansions conflicts will intensify. It will be interesting to see which of them will have an interest for the registrants as for the gTLD .CO. The registrant of the domain name <tes.co> was considered infringing the trademark of the company Tesco whereas the extension was not taken into consideration during the assessment of the similarity between the trademark and the domain name.