Perspectives

Volume 6, Issue 2 March 11, 2011

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.CO - Trials and Tribulations for Trademark Owners.

There has been a lot of buzz over the past few weeks about .CO, the Colombian country code top-level domain (ccTLD), and for good reason.

Go Daddy, the world’s largest domain registrar, heavily promoted .CO through a series of advertisements, a Super Bowl spot, and the announcement of Joan Rivers as its new “.CO girl.” Overstock.com is actively promoting their new domain “o.co” as a shortcut to their site and major publications like the New York Times have covered the use of ccTLDs as major revenue generators for foreign countries.

Colombia was assigned the .CO extension back in 1994 when John Postel, one of the founding fathers of the Internet, penned RFC 1591.1 The second-level domain .COM.CO had always been open to registrants outside of Colombia but the top-level domain .CO was unavailable commercially until Colombia decided to open it up to the rest of the Internet community in 2010, following the example of other countries such as Tuvalu, .TV, and Montenegro, .ME. The registry .CO Internet SAS, with headquarters in both Miami, Florida and Bogotá, Colombia, was chosen to operate the .CO registry under license from the Colombian government, and is responsible for administering, managing and promoting the .CO extension.

It appears that the .CO TLD is being positioned as a new opportunity for companies and individuals to brand their online presence, whether they are well-established major companies that could use a traffic boost or a small company that cannot register its domain in the .COM space. The marketing push behind .CO also attempts to promote the idea that most Internet users are more likely to associate .CO with “company”, “corporation” or “commerce” instead of the country.

Knowing that .CO is ramping up its marketing efforts with the hope of a huge increase in the total number of .CO registrations over the next few years, FairWinds was interested in finding out what major brands are doing in the .CO space and how they might be using the ccTLD. There are currently 600,000 .CO registrations, a number that .CO Internet is hoping to boost to five million over the next five years.2

FairWinds began by examining the Interbrand 100 best global brands for 2010. Interbrand bases its selections on financial performance, role of brand, and brand strength. The result is a list of 100 brands that are truly global, demonstrate strong economic and financial profit and possess strong public profiles and awareness.

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FairWinds created a list of the 100 .CO domains that correspond to each brand’s primary domain name in the .COM extension, taking into account that not all brands use their brand name for their primary website. Johnson & Johnson, for example, uses jnj.com. We then checked whether the domain is registered, if the registered domains are owned by the target brand, and how the domain resolves.

FairWinds discovered that 100% of all .CO domains in the set have already been registered or reserved by the registry, with 87% of those owned by the target brand. FairWinds also found that 63% do not resolve to any content, 4% point to pay-per-click sites and 2% resolve to a third party site.

Three of the domains were listed as “reserved” by the registry; santander.co, ge.co and ferrari.co. Interestingly enough, the WHOIS information for ferrari.co also included a note listing it as a “reserved name for specially protected mark list.”

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The results of this research were surprising; specifically the high registration rate by brand owners. With regard to ICANN’s planned introduction of new TLDs, some brand owners have raised the idea of “boycotting” the registration of domains; brand owners’ actions in .CO could be a harbinger of things to come.

The high registration rate and low usage rate by brand owners suggest that most of them are registering domains in the .CO space strictly for defensive purposes. In general, they do not appear to have high expectations for the productivity of their investments in .CO, viewing it instead as an area of risk, perhaps because of the possible typographical error that it presents in association with .COM, or perhaps because of other reasons related to the marketing and sale of the TLD itself.

Brands need to be aware, though, that regardless of their reason for registering, their .CO domain name should always resolve and point to either their main .COM site or a Colombia specific site.

Samsung.co, for example, resolves to Samsung’s Colombia page, and colgate.co redirects to Colgate’s Colombia page at colgate.com.co. This ensures that Internet users making a .CO typo end up with the content that they were looking for, instead of leaving with the assumption that the site is down, potentially leading to a negative impression of the brand. .COM.CO, a historic commercial ccTLD for Colombia, is the better option for country-specific content. .CO is better used to redirect to .COM content.

Another thing that FairWinds is interested in, is what this use of the .CO space means in light of ICANN’s proposed introduction of new TLDs. As we have pointed out before, new TLDs will lead to increased costs for brand owners due to defensive registrations. They will also give cybersquatters more opportunities to infringe on brands and trademarks, which will further increase the monetary burden on brand owners and extend the harm to consumers. 2010 has already shown a marked increase in the number of UDRP complaints filed with the World Intellectual Property Organization (WIPO) and the National Arbitration Forum (NAF). Now that both have the power to administer .CO Internet domain dispute cases under the Uniform Dispute Resolution Policy (UDRP), we expect to see this number continue to rise.

The results of our .CO research suggest that major brands, anxious about falling victim to infringers and cybersquatters, have become more diligent about defensively registering domain names for their brands. Registrars, unfortunately, are then able to prey upon this fear, offering brands overwhelming amounts of new opportunities, turning registrations into the “anti-anxiety prescription.”

Defensive registrations might mean big business for registries and registrars, but they carry a heavy cost for brands. High registration and low resolution only mean one thing in this case; brands and trademarks are willing to register, but that is not proof of utility nor does it indicate how successful other TLDs will be.