United States Trademark owners should consider registering their domain names in Colombia. As of April 26, 2010, non-Colombian trademark owners are allowed to register domains identical to the U.S. trademarks under Colombia's top level domain ".co."
On February 7, 2010, Colombia's newly appointed Administrator for ".co," the country code top-level domain assigned to Colombia, undertook a massive overhaul of the previously restrictive ".co" domain registration. Most importantly for U.S. trademark holders, the Colombian Administrator removed all prior registration restrictions allowing individuals outside of Colombia to register a domain name directly under the top level domain (TLD) ".co".
This development opens up a whole new realm for abuse of trademarks and domain names. If you are a company with a valuable "dot com" domain name, abusers who would otherwise be considered cybersquatters or typosquatters can secure your domain name as "dot co" in Colombia with relative impunity.
What is the Impact in the United States?
If you own a trademark in the United States and have a registered domain name under ".com," the potential for harm to your mark and brand strength increases significantly with Colombia's recent changes. Assuming a third party registers the ".co" domain name that corresponds to your trademark or existing ".com" domain registration, that third party could exploit your brand and capture Internet traffic otherwise intended for your website, not to mention the increased potential for consumer confusion and other forms of cybersquatting.
Colombia's proposed changes to the ".co" domain are already being enacted. In March and April, 2010, existing ".co" registrants and Colombian trademark owners were allowed to register corresponding domain names under ".co." From April 26 through June 10, 2010, registered trademark owners outside of Colombia will be able to register domains identical to those marks under ".co." Following the June 10, 2010, cutoff for registered trademark owners, anyone will be able to request a domain under ".co" without proof of intellectual property rights.
Internet browsers' typos may cost you money. Prior to Colombia's recent changes, a Colombian trademark owner could not obtain a direct ".co" domain name. Rather, registrants were restricted to "www.TRADEMARK.COM.co" or "www.TRADEMARK.NET.co." Assuming that you own a domain name of "www.WIDGETS.com" in the United States, after June 10, 2010, any person or entity could register the domain name "www.WIDGETS.co" in Colombia. An Internet user's common typo omitting the "m" from ".com" could lead to increased cybersquatting, diversion of traffic from your website, and potentially cost you money.
While cybersquatting has become less of a problem in the United States in recent years due to the enactment of the Anticybersquatting Consumer Protection Act (ACPA) (15 U.S.C. § 1125(d)), Colombia's changes could cause a surge in activity that would amount to cybersquatting or "typosquatting" in this country. "Typosquatting" is a species of cybersquatting where unscrupulous entities attempt to trade off the goodwill of well known brands, trademarks, and domain names by securing domain name registrations of close and commonly mistyped variants of the well known names. Typosquatters typically register a variety of such common misspellings of popular domain names, in hopes of capturing some traffic intended for a known site. The availability of ".co" is expected to be a bonanza for typosquatters, although the TLD ".co" is now sanctioned for legitimate use.
With Colombia allowing the direct registration of ".co" without proof of any intellectual property rights, it will be even easier for "squatters" to take advantage of a very common typo. While you may not succumb to the "squatters" demands of money for release of the similar domain, bringing a lawsuit under the ACPA can be very costly. And in many cases, it may be impossible to obtain jurisdiction in U.S. courts under the ACPA, since the ACPA is strictly a U.S. remedy.
Additionally, while the "squatter" may not demand money for release of the domain name, they may still affect your bottom line by posting websites with "pay-per-click" advertising or the use of malware on the similarly named domain. The associated advertising costs and/or damage to your brand's reputation can be very costly.
What Should You Do About "Dot Co" Names?
The bottom line: Relatively speaking, the cost of obtaining the TLD domain name for ".co" is cheap compared to the cost of lost business or mere inconvenience of having a typosquatter appropriate your trademark or domain name. It may be wise to move quickly to obtain the "dot co" equivalents for your valuable "dot com" names."
Of course, the first line of defense is to register valuable trademarks and service marks in the U.S. and in countries of significant markets. It also pays to be vigilant and monitor for cybersquatting. A number of watching services are available to help identify potential cybersquatters when they occur. It may also be possible to utilize the Uniform Domain Name Dispute Resolution Policy (UDRP) to force a transfer of an infringing domain name if you have registered trademarks and otherwise are eligible to start a domain name dispute proceeding.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
