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Choosing a Domain Name With a “.co” Extension that Has No Independent Presence on the Internet

The extension “.co” (country code for Columbia) is perfectly respectable although confusing with “.com” where the second level domain is identical to a trademark, there is no explanation for the registration and the respondent has no relationship with Columbia. It suggests a deliberate attempt to use “a particular ccTLD space” for illegitimate purposes, which in fact was the holding in New Dream Network, LLC v. Yuanjin Wu, DCO2010-0013 (WIPO October 25, 2010). In certain circumstances registering a “.co” can be regarded as typosquatting:

While usually the domain name extension is disregarded for the purpose of comparison under paragraph 4(a)(i) of the Policy, that standard approach does not prevent a Panel finding, in relevant circumstances, that confusion might be created by a ‘misspelling’ of a gTLD. The difficulty is determining whether the circumstances indicate that there is, in fact, a deliberate misspelling, rather than a legitimate registration of a domain name in a particular ccTLD space. In this case, the Panel considers that the circumstances suggest a deliberate misspelling. There is no evidence of any connection between the Respondent and Colombia, to which the ccTLD relates.

An alternative analysis to typosquatting – which should be reserved to changes to the second level domain – would be to focus on the respondent’s failure to explain its “connection … [with the country] to which the ccTLD relates.”

The more typical analysis is found in Anachusa Ltd. v. Prasad Jason, advertoglobe, DCO2010-0041 (WIPO January 5, 2011) where the Respondent registered <pokerstrategy.co> which is virtually identical with the Complainant’s domain name [<pokerstrategy.com] and identical to the trademark POKER STRATEGY. In this case the Respondent attempted an explanation, but it was unpersuasive in light of the facts. The Panel’s summary of the explanation is as follows:

The Respondent says that it has rights or legitimate interests in the Disputed Domain Name as it is a generic term or phrase which is relevant to the Respondent’s business to the extent that it provides tips or advice on playing poker at its website and should not be monopolized by one industry player. The Respondent says that he has been involved with the on-line poker industry since 2003 and that the use of the Disputed Domain Name is only an extension of his involvement and is relevant to the services that he provides.

That a trademark is generic does not for that reason alone make it unprotectable. In Anachusa the domain name had no active, independent presence on the Internet, but was redirected to the respondent’s own website <winner.com>. The Respondent lost on the inferences the Panel drew from the totality of admitted facts, among them the redirection, but also on the Respondent’s acknowledgment of the success of the Complainant’s website which had been in operation for a number of years prior to its registration of the disputed domain name. The Panel inferred that

the Complainant’s domain name has most likely developed some degree of source identifying significance, at least amongst the Internet based poker playing community. In these circumstances the Panel infers that it is most likely that the Respondent took the opportunity to register the Disputed Domain Name with a view to using it to attract Internet users to the website at “www.winner.com”.

When a complainant proves that there is “enough goodwill and reputation in and to a name and sufficient association of the same with the [complainant], no matter how strong or weak those trademark and service mark rights may be” that is sufficient to satisfy the first element the Policy, Action Sports Videos v. Jeff Reynolds, D2001-1239 (WIPO December 13, 2001). Similarly in Anachusa even though on the application the Complainant disclaimed the words “poker” and “strategy” except as used with the mark as a whole.

 

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