Between 2013 and 2014, over 1,000 new domain name extensions will be created (which we commonly refer to as new GTLDs). It is estimated that the number of reserved domain names will increase to around 800 million (compared to 200 million at present).
What is it all about? It’s about creating new extensions, whether in the form of .generics (.wine, .hotel, .shoes, etc.), .trademarks (.ibm, .loreal, etc.), or .geography (.paris, .nyc, etc.).
How does that affect you? On the one hand, it’s a good thing since certain domain names may be beneficial to your business (the combination of a trademark plus a generic term can improve ranking). However, there may also be a negative impact if third parties, whether consciously or not, try to reserve your trademarks or combinations that create confusion with your rights, thereby affecting your ranking without your knowledge.
Has ICANN made any provisions for trademark holders? ICANN has devised a system called a Trademark Clearinghouse (TMCH) which allows trademark owners to register their rights, thereby gaining access to two services:
– firstly, a priority-level access to the sunrise period (following the launch of extensions)
– secondly, a trademark notification service (Trademark Claims service) that warns trademark holders of requested reservations that match their trademark registered with the TMCH within a 90-day period following the opening of the extension. Domain name registrants are also notified through this system.
It is important to note that registration on the global TMCH database is temporary (1, 3 or 5 years, renewable each year).
Last but not least, resolution proceedings known as Uniform Rapid Suspension System (URS) will be put in place.
Does this apply to all rights? All rights holders may apply, whether they hold national or regional word marks (such as community trademarks) as well as rights holders validated either by the courts (Common Law countries) or by existing laws or treaties (for example, non-commercial treaties).
Thus, the trademarks that do not apply are those which:
– contain extensions, such as .com
– contain a “.”
– contain no letters, words, numerals or valid DNS characters (figurative trademarks are therefore excluded)
– are registered by a city, state, province, or sub-national region.
What are the system’s limitations? The TMCH cannot block the registration of a domain name since its sole purpose consists of notifying registering third parties of the existence of your rights only when there is an exact match with a trademark term.
What are the options available? The first option is to do nothing (remember that non-registration cannot be considered as negligence nor as a waiver of trademark rights). As a result, you will not be able to benefit from the sunrise period, and if a third party tries to register your domain name, they will not be notified of your rights and you will not be alerted.
The other option is to register your trademark with the TMCH. Given that this process gives you priority-level access to the sunrise period, it is better to define beforehand the reservation of domain names with which you wish to proceed. Additionally, for domain names that you have not reserved, the third party that is applying will be notified of the existence of your rights and cannot therefore claim that they were unaware.
When it comes to domain name reservations, it should be noted that in the case of multiple applications by legitimate rights holders, each within their class of activity or in a different country, a lottery system will be used.
Choosing between these 2 options depends on your preliminary strategy regarding these new extensions. As a matter of fact, registering with the TMCH without reserving domain names or reacting to fraudulent reservations can be detrimental to you. In such a case, it is perhaps better not to register. If you have an interest in domain names and would like to react to certain reservations that would pose a problem to you, then registering your trademark with the TMCH is definitely a must.
What does the date of 26 March 2013 refer to? This is in fact the system’s opening date on which agents can apply for accreditation with ICANN in order to register trademarks with the TMCH on behalf of third parties.
According to our sources, the first extensions to be launched between August and October 2013 will be the IDN (domain names in regional characters, accents, non-Latin characters, etc.), followed by non-IDN extensions in December 2013, then the first set of .Corp in January 2014.
Our advice
In the appendix you will find our explanatory note on the impact of these new extensions (and in particular the ICANN’s TMCH system through which you can register your trademarks) as well as a listing of these new extensions. ICANN has updated the TMCH system that prioritizes trademark owners, and we consider it worthwhile, at least for strategic trademarks, to take advantage of this development.
Inlex has established itself as an official agent to handle such registrations.
The registration of your trademarks with the TMCH must be preceded by an in-depth reflection regarding your strategy on registration, reservation and reaction against these domain names. While you cannot be blamed for not registering with the TMCH, there is a risk that if you do register, but do not reserve domain names or react against third party reservations when they are notified of your trademark, your inaction could be deemed as tolerance for which you could lose the right to pursue legal action. Under these circumstances, you would suffer unfavorable legal consequences and incur expenses.
Additionally, the TMCH move must be made only after careful consideration of the associated advantages and a strategy based on reservations and reactiveness. Given that we currently do not know what the real impact of these new extensions will be on the web, we believe that one should make such reservations sparingly. In other words:
• register a trademark with the TMCH for the 3-year period covering the opening of new extensions. See our rates in the appendix (see TMCH Guidelines: http://www.trademarkclearinghouse.com/sites/default/files/files/downloads/TMCH%20guidelines%20v1.0%20_1.pdf)
• reserve domain names with the extensions of your choice and look for the least costly providers (beware of requests by numerous providers who try to sell reservations at a high price), given that neither a price nor condition has as yet been set.
If you would like to reserve any of the extensions within the appendices, registering your trademark with the TMCH is necessary. On the other hand, if you do not wish to make any reservations, and do not see yourself reacting to reservations by cyber squatters, it is perhaps better not to register your trademark.