Although related to a country code, the Colombian extension <.co>, this case has made a major contribution to the defense of brands in the new extensions.
The extension <.co> is the first to be used massively as a gTLD, including by the Internet’s Majors (Google with <g.co>, Yahoo! with <y.co>). Acronym of Company, Corporate, Connection, Community or also Communication, it quickly became the speculators’ perfect target. The shortage of <.com> has reinforced this trend.
However, most of the new domain names extensions will have a signification. As such, they are prone to increased cybersquatting activities.
The main contribution of the <tes.co> decision is to specify that the extension of a domain name can be used to assess the confusion risk with a trademark. The WIPO experts state that the dot between the radical and the suffix is irrelevant in this risk appreciation when it’s the only element of the domain name that prevents it from being identical to the defended trademark.
Thereby, a domain which – without the dot separating the domain name and the extension – would be identical to a trademark, generates a high-risk of confusion and would very probably be cancelled or transferred. In this case, the <tes.co> domain name was considered as similar to the TESCO trademark, de facto generator of confusion, and the domain name transfer was ordered.
This decision was rightly welcomed: it will better defend the rights owners in future UDRP proceedings, against cybersquatters who’ll use the new extensions.
The word « BIO » means « life » in Greek and is understood by most people in the world as the root of the word « biologic ». Often considered as a synonym of “good” and “healthy”, it brought amazing success to the “BIO” sign over recent years.
However, after reaching a summit of popularity, this term’s usefulness is now in decline.
The intensive use of the word “BIO” has led to a decrease in the trademark’s distinctiveness and has thereby given to confusion between trademarks using the “BIO” sign.
In France alone, more than 4,800 valid trademarks contain the sign “BIO”. If around 1,400 of those products concern the food industry (1,425 registries in class 30 and 1,035 in class 31), it is increasingly used by other products such as pharmaceuticals (class 5 with 1,311 registries) or cosmetics and cleaning products (class 3 with 1,317 registries).
This trend is confirmed in all other countries (The European Union has 7,800 valid trademarks, the USA 3600).
Australia is a flagrant example of this phenomenon: 2,300 marks include the word “BIO” and 90% of them use it as a prefix.
In such a context, the trademarks are difficult to defend.
For example, the German Federal Patent Court has recently ruled on the similarity of two trademarks, both sharing the same “BIO” prefix: « BIONSEN » and « BIOPHEN ». Even if it didn’t emphasize the “BIO” element, the Court ruled that the later mark, BIOPHEN, was to be removed from registration.
The publication of the new Intellectual Property law expected in July was delayed and should be in force in 2014.
As a matter of fact, Myanmar government has to re-draft some additional requirements of WTO (1) and WIPO (2). Until then, the existing law is still effective.
So, there is not yet examination system for Trademark Application or Certificate of Trademark Registration deliveries, but a Declaration of Ownership of Trademark should be filled with Office of the Registrar of Deeds in Yangon, Myanmar capital.
This declaration is an initial evidence of use in case of dispute and can be supported by records publication on local newspaper.
This declaration has no precise validity period, but it is recommended to renew the record in every 3 years. First and last declarations will be strong evidences of use in case of possible disputes.
(1) World Trade Organization.
(2) World Intellectual Property Organization.
The new gTLD program is now fairly advanced and the launches follow one another in rapid succession. So far, 250 Registry Agreements has been signed with the applicants, 106 new gTLDs passed the technical tests and were delegated and 69 have or had a defined Sunrise date.
The first Sunrise period (.SHABAKA) launched on October 31, 2013 was terminated on December 29. Seven Sunrise periods are to be finished on January 25 (bike, clothing, guru, holdings, plumbing, singles and ventures) and another 7 on February 1st.
Among the new gTLDs being launched, the .SEXY is a sensitive one by its meaning and by its registration rules that are totally opened. The cybersquatting in this TLD can be extremely harmful in terms of image and we therefore recommend preventive registrations by taking advantage of the priority Sunrise period that will end on February 9.
As a reminder, a registered trademark in the Trademark Clearinghouse (TMCH) and corresponding SMD files are mandatory to participate to a Sunrise.
Donuts Sunrise
The Donuts program is about to finish its first Sunrise period. Find below all ongoing and forthcoming periods:
Sunrise from 26 November 2013 to 25 January 2014 : the new gTLDs offered are .BIKE, .CLOTHING, .GURU, .HOLDINGS, .PLUMBING, .SINGLES and .VENTURES
Sunrise from 3 December 2013 to 1st February 2014: the new gTLDs available are .CAMERA, .EQUIPMENT, .ESTATE, .GALLERY, .GRAPHICS, .LIGHTING and .PHOTOGRAPHY
Sunrise from 10 December 2013 to 8 February 2014 : the new gTLDs are .CONTRACTORS, .CONSTRUCTION, .DIRECTORY, .KITCHEN, .LAND, .TODAY and .TECHNOLOGY
Sunrise from 17 December 2013 to 15 February 2014 : the available new gTLDs are: .DIAMONDS, .ENTERPRISES, .TIPS, .VOYAGE
Sunrise from 24 December 2013 to 22 February 2014 : .CAREERS, .PHOTOS, .RECIPES, .SHOES
Sunrise from 31 December 2013 to 1 March 2014 : the new gTLDs are as follows : .LIMO, .DOMAINS, .CAB
Sunrise from 31 December 2013 to 8 March 2014 : the offered new gTLD is .COMPANY
Sunrise from 7 January to 8 March 2014 : the new gTLDs available are : .COMPUTER, .CENTER, .SYSTEMS, .ACADEMY, .MANAGEMENT
Sunrise from 14 January au 15 March 2014 : the new gTLDs available are : .EMAIL, .SOLUTIONS, .SUPPORT, .BUILDERS, .TRAINING
Sunrise from 21 January au 22 March 2014 : the new gTLDs are : .EDUCATION, .INSTITUTE, .REPAIR, .CAMP, .GLASS
Sunrise from 28 January au 29 March 2014 : the new gTLDs offered are : .SOLAR, .COFFEE, .INTERNATIONAL, .HOUSE, .FLORIST
The first Early Access Program periods will start on January 29, 2014 for the .BIKE, .CLOTHING, .GURU, .HOLDINGS, .PLUMBING, .SINGLES and .VENTURES. The Early Access Program is a period that offers fixed price domain names each day on a “1st come-1st served” basis, the price varying on the first day from $ 10,500 to $ 125 on 5th, 6th and 7th days.
.MENU and .UNO Sunrises
.MENU and .UNO Sunrises are opened from 9 December 2013 and will end on 7 February 2014.
The targets of .MENU are restaurants, chefs and every person interested in cookery. As the term “menu” is used in 33 different languages, the gTLD .MENU will gather a large online community throughout the world.
Dot Latin LLC registry offers its .UNO to connect all Spanish and Latin communities and aims to provide instant recognition to sites by companies and consumers.
Sunrise for . みんな, the first and only Japanese IDN
Google launched its Sunrise for its first new gTLD, the Japanese IDN みんな(mee-nuh) which means “everybody”. The registration period will run until 14 February 2014.
Sunrises for geographical new gTLDs
The regiodot registry offers the new gTLD .RUHR for the eponymous German region during the current Sunrise that will end on 20 February 2014. A local presence in Germany is mandatory to register a domain name. A “RUHR phase” will be reserved to inhabitants and companies of this region between the Sunrise and General Availability periods.
The dotkiwi already launched its Sunrise for the .KIWI. This period will run until March 17. There is no geographical restriction to register domain names.
The .BERLIN will be available from 14 February to 16 March 2014. It will be convenient that one of the contacts (owner, administrative or technical) has a postal address in Berlin.
Uniregistry Sunrise for .SEXY and .TATOO
The Sunrise for both .SEXY and .TATOO new gTLDs will be opened to trademark owners until 9 February 2014.
The new gTLD .CEO in a ‘Start-Date Sunrise’
The beginning of the Sunrise period for .CEO will be on 10 February and will last 30 days until March 12. In a ‘Start-Date Sunrise’, domain names will be registered on a ‘first come-first served basis’ unlike the auctions held during ‘End-Date Sunrises’.
The .ONL to be known ONLINE !
The .ONL Sunrise will be opened until 15 March 2014. To own a .ONL will grant to the Internet user a better access to websites in this new gTLD if they type the words ‘onl’ or ‘online’ in the search engine.
Sunrise for Chinese gTLDs .在线 and .中文网
The registry for .在线(online) and .中文网(website) announced that its Sunrise will run from 16 January to 17 March 2014.
The .BUZZ available from 15 January 2014
dotStrategy was awarded the .BUZZ by ICANN and the new gTLD will be introduced during the Sunrise from 15 January to 18 March 2014.
In the context of ICANN’s new Registrar Accreditation Agreement (RAA), which took effect from 1st January 2014, domain name owners of gTLDs should expect to receive the following 3 emails:
An e-mail requesting confirmation of the e-mail address of the rights’ holder
An e-mail asking for the WHOIS information to be updated if necessary,
An e-mail notifying the expiration of the domain name sent 15 days before the expiry date whether or not the domain name has been renewed.
The e-mail to confirm the e-mail address of the rights’ holder is a mandatory requirement that must be met within 15 days of receipt.
In the event of failure to provide confirmation, the domain name will be suspended but would however be reactivated once confirmation is received.
In a ruling of June 21, 2013 (1), the Paris Court of Appeal rejected a counterfeiting action filed by the SPPF (the French collecting society for record labels’ neighboring rights in sound recordings) against Youtube for allowing internet users to post counterfeit videos.
In 2008 Youtube had withdrawn over 200 contentious videos from its platform following a cease-and-desist letter from the SPPF specifying that the rights holders had not given their consent. Since a large number of these videos were subsequently posted several months later, the SPPF filed for an action against Youtube and Google.
The Paris Court of Appeal ruled that only the judicial authority has the power to impose on hosting service providers a duty to temporary and targeted surveillance in accordance with article 6-I-7 paragraph 2 of the law to generate confidence in the digital economy (LCEN).
It is worth recalling that as a result of combining sections of articles 6-I-2 and 6-I-5 of the LCEN legislation, hosting service providers are not subject to any general obligation to monitor the data stored or any general obligation to research the facts or circumstances arising from illicit activities, . Besides, the withdrawing of content by a host site cannot be undertaken without prior notice.
The Paris Court of Appeal confirmed the lack of obligation on the part of hosting service providers to make a permanent removal, and restated the requirement for a further notification when withdrawn contents are re-posted. In other words, every new posting containing illicit content requires a new withdrawal notification.
This ruling follows the precedent set by the High Court (Cour de Cassation) in three decisions of July 12, 2012 (2), in which it refused to enforce an obligation for permanent withdrawal, considered to be a duty of general surveillance not covered by the terms of the LCEN legislation. When illicit content is posted once again by a different internet user, it should be considered as a new case requiring a further notification in line with the requirements of article L6-5 LCEN. To support the duty to permanent withdrawal would imply the modification of LCEN article 6 and would require an overhaul of e-commerce guidelines.
As a result, it is even more important today to monitor social networks in order to respond appropriately.
(1) Paris Court of Appeal, pole 5 Chamber 2, decision of June 21 3013, SPPF versus American company YOUTUBE LLC, GOOGLE France and GOOGLE Ireland ltd.
(2) Decisions of July 12 2012, no 11-13-666; no 11-15.165 and 11-15.188; no 11-13.669
On April 2013, the British Virgin Islands (BVI) passed a new Trade Marks Act in order to bring to date the 19th century country’s trademark.
Among the features of the new law:
– the classification system will be based on the Nice Classification unless the Financial Services Commission decides to use another one,
– only a registered trademark agent can apply for the registration of a trademark,
– it will be possible to claim priority for a trademark already registered in a Paris Convention country or a World Trade Organization member,
– once a trademark is registered, the renewal period will be 10 years. However, if a trademark has been registered before commencement of the Act, its 7-year renewal period will be unchanged until expiration, and
– for marks not registered in the BVI, use of ® or the word “registered” without being able to show a valid registered certificate from another jurisdiction is subject to a fine.
The open auction of previously reserved domain names has already generated over 50 million yuan, or more than 8 million dollars.
The auction of domain GAME.CN produced the highest offer of nearly 3 million yuan after 700 bids.
In second place was domain name GW.CN which is the Chinese abbreviation for “gou wu” or “guo wang“, meaning “shopping” or “national network”. Bids climbed to over 2 million yuan.
The domain LB.CN came next with over 1 million yuan. This can stand for “lao ban“, “libao” or “lian bang” which mean respectively “boss”, “gift” and “federal”.
The fourth best auction result was for the domain name CM.CN, much sought-after by investors and Chinese “domainers” and which brought in over 1 million yuan.
Thanks to these auctions the funds accumulated – after tax deductions – will be given to charity.
With effect from 8 January 2014, residents, companies and organizations based in Iceland, Lichtenstein and Norway can register .eu domain names.
This decision by the European Commission is based on regulation EC 733/2002 of the European Parliament and Council which foresaw the extension of .eu to the whole of the EEA.
The registration policy and the Whois policy, as well as the Terms and Conditions with regards to privacy were also updated.
After leading a study concerning the likelihood and impact of collisions between applied-for new gTLD strings and non-delegated TLDs, ICANN suggests to the community mitigation measures in order to avoid collisions.
Those problems may occur when local top-level domains in private namespace reach the public DNS while they already exist or when certificate authorities issue X.509 certificates for domain names that are not resolvable in the public DNS.
The study emphasises three categories of strings by the potential risk of name space collision: low risk, uncalculated risk and high risk. For each one of them, the program offers a determined and made to measure management process.
In this way,
for low risk gTLD strings, the study proposes proceeding with contracting and delegation of these strings but recommending additional mitigation measures without impacting their timeline for delegation,
for uncalculated risk gTLD strings, the delivery date should be extended by 3 to 6 months, and
for high risk strings which are .home and .corp, the process will be delayed until those strings goes to low risk category.
The new gTLD string delegation process is long and delicate. At this stage, all these steps are proposals only and opened to the Internet community’s comments.
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Written by Dreyfus30/01/2014 
The new domain name extensions are arriving. The waiting period was conducive to the establishment of a qualitative legal framework, as illustrated by the <tes.co> recent UDRP decision (http://www.wipo.int/amc/en/domains/search/text.jsp?case=DCO2013-0017).
