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International - Big brands have only days to block the '.co' cybersquatters

By Adam Smith
July 12 2010

The Colombians are no doubt planning a big party. It seems that their well-funded attempt to turn the '.co' country-code top-level domain (ccTLD) into a global alternative to '.com' may well pay off: over half of the top 500 global brands have signed up for a '.co' already. However, WTR has seen a list of domains invalidated during the sunrise period which suggests that the cybersquatters are circling - and brand owners have just days to protect some well-known marks.

Out of the 100 brands granted special status by Deloitte before the sunrise, 84 of them have now registered and the registry is hoping to reach 100% within the next two weeks. Meanwhile, up to 70% of the world's best brands (according to BrandFinance) will have applied for a '.co' before the domain goes on general sale.

But some brands will need to act fast to save their names from cybersquatters' clutches. WTR has seen a list, so far sent only to registrars, that details the 1,500 domains invalidated during the sunrise period. These are names that applicants claimed corresponded to trademarks but were rejected by the registry, known smartly as .CO. The list includes:

  • 'benylin.co' (a key asset in Johnson & Johnson's $60 billion portfolio);
  • 'bratz.co' (the multibillion-dollar Bratz brand is owned by MGA Entertainment);
  • 'hulk.co' (a valuable character in the Marvel pantheon, owned by Disney); and
  • 'java.co' (Sun Microsystems, a subsidiary of Oracle, owns numerous JAVA trademarks for programming language).

Most of the 1,500 terms on the list are generics such as 'airways.co' and 'slimming.co'. But some, such as those unveiled above, represent terms in which trademark owners were unable to prove their rights or (more likely) terms that cybersquatters tried to register. And now they're thrown back into the pool for all to fight over. Where more than one application is submitted for a single term, an auction will commence.

According to .CO, this is the fairest way to run the process. "We've bent over backwards to allow brand owners to register their names," explains Nicolai Bezsonoff, .CO's chief operating officer. "We had a trademark sunrise period, a globally protected brands list and a very transparent process. There's nothing more we can do. The worst thing that could happen is for a brand to come in six months later and say they didn't realize it was going on."

Given the marketing spend for the '.co' launch, lack of awareness is an unlikely problem. The publicity around the global 100 brand list attracted a lot of interest among trademark owners when it was drawn up by Deloitte, and .CO even had a presence at this year's International Trademark Association (INTA) annual meeting.

So trademark owners who don't know it's happening must have been walking around with their eyes closed (and even that may not have been enough to block out the loud orange of .CO's own brand). The wide publicity has meant that the registry received over 11,000 applications from brand owners during the sunrise period, and a further 15,000 applications during the land rush. Such is the demand that .CO has extended its land rush until noon EST on July 16, giving brand owners a few extra days to come to the party. Some of them may wish to try and grab the terms invalidated during the sunrise, including valuable industry generics.

While brand owners may resent having to register their 'brand.co' as a defensive measure only, Bezsonoff thinks that the biggest risk brand owners face is focusing solely on brand protection. "In addition to rounding out your portfolio of defensive registrations, the land rush is the best opportunity for brand owners to secure the premium keyword domain names that can help drive traffic and generate consumer awareness about their business, product, service or brand," Bezsonoff says. "The new domain provides opportunities for brand extension."

WTR has learnt that some famous brands are planning to market and offer new services and products using only their '.co' website, proving the registry's position that the domain may become take market share away from '.com'.

But the apparent boom of '.co' will leave some brand owners uneasy. As.CO shows, the more money invested in a ccTLD, the more it becomes a serious contender in the busy domain space - and the more important it becomes for a brand to register in it. To some extent, whether the brands have any interest in brand extension is immaterial. Nevertheless, every brand owner must now decide whether to register each of their key brands in the '.co' space.

With over 26,000 applications before the domain goes on general sale - not to mention the auctions that may occur over precious generics - .CO is about to make a lot of money. This would have been much more difficult without the backing of the major brands. Building strong rights protection mechanisms into the launch is obviously popular. It's also a shrewd business model.

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