On 14 March 2014, the WIPO Arbitration and Mediation Center rendered the first decision in the context of an UDRP proceeding against a domain name reserved under one of the new gTLDs. In this case, it was the domain name canyon.bike reserved the 5 February 2014 anonymously through the GoDaddy.com, LLC registrar.
The German company, Canyon Bicycles GmbH, was quick to react and on 10 February 2014 filed an UDRP complaint.
A single Expert considered that the domain name canyon.bike infringed on the prior rights of the Canyon Bicycles GmbH Company for its CANYON brand and that the licensee had no rights or legitimate interest in the name and had reserved and used the domain name in bad faith. The expert therefore ordered the transfer of the domain name to the benefit of the plaintiff.
However, the Expert did point out that given the arrival of many new domain name extensions, the extension of the concerned domain name could now be taken into account when determining the identity or similarity between the domain name and the trademark.
Even though in the above case the expert did not consider that this was necessary as the name included in the domain name was identical to the earlier cited trademarks (in this case the plaintiff had argued that the extension .bike was a reference to his activity as a manufacturer of racing, all-terrain and triathlon bikes).
This decision is undoubtedly the first in a long line and it is safe bet that in light of the new extensions that are being launched, the extension in itself will be increasingly taken into account when assessing the UDRP procedure conditions.
REGIMBEAU has a team specialising in domain name law at your disposal to help you put in place a strategy for protecting your brands on the Internet in light of the launch of the new domain name extensions. Don’t wait any longer!
