Another WIPO decision has come down which should spark some worries for website operators that registered domains last year when the “.co” Colombia country code top level domain (ccTLD) extension became available generally last July. The availability generated interest as a potential competitor to generic TLDs for commercial use given its possible use as the abbreviation for the word “company” as their promoters emphasized (see e.g. http://www.cointernet.co/).
The domain at issue most recently is the very descriptive <pokerstrategy.co> domain. According to the recent report by The Domain Blog, a UDRP complain was brought by Swerford Holdings Ltd. (“Swerford”) which had, according to the complaint, operated the <pokerstrategy.com> site since 2002.
The respondent in the case, Prasad Jason, registered < pokerstrategy.co > last July and proceeded to operate a relatively competing business model.
Considering that the Complainant is required to demonstrate that it has trademark rights in a relevant mark whether the mark is comprised of a combination of two common English words (as in this case) or otherwise, the WIPO panel indicated that Swerford demonstrated that it owns a German word mark registration for POKERSTRATEGY which fulfills the requirement.
The respondent previously operated a business through its <winner.com> and, prior to filing the UDRP action counteroffered a $20,000 to $25,000 settlement to transfer the domain to Swerford. Consequently the panel inferred that is most likely the Respondent had, in bad faith, taken the opportunity to register the domain at issue to attract internet traffic to his own business. With thyat, the panel ordered that the disputed domain name be transferred to Swerford.
A similar case last year, New Dream Network, LLC v. Yuanjin Wu (WIPO Case No. DCO2010-0013), also covered by The Domain Blog, also dealt with what is tantamount to a holding that a “.co” domain was typosquatting its “.com” counterpart.
The bases for the concerns here focuses on the weakness of the trademark which has won the adjudication. “Poker Strategy” (with or without a space) is, on its face, a strictly descriptive mark for a business that deals in “Poker Strategy.” Given the history of the TTAB in the last few years, it is doubtful such a mark could be registered today in the U.S. (See, for example, the dozens of rejections cited by The TTAB Blog). This is on the low end of the “Abercrombie Scale”; set forth by a federal appeals court in Abercrombie & Fitch Co. vs. Hunting World, Inc., consisting of five different categories in order of generally increasing distinctiveness:
- generic
- descriptive
- suggestive
- arbitrary
- fanciful
Thus, the bar is pretty low at the WIPO to defend trademark registrations from the recently registered “.co” domains.