NEW gTLDS Step 5


“THE SUNRISE PERIOD ALLOWS A TRADEMARK OWNER TO SECURE A DOMAIN NAME MATCHING ITS TRADEMARK BEFORE THE NEW GTLD IS RELEASED TO THE GENERAL PUBLIC.”


Implement a ‘watch service’ to monitor the new gTLDs for domain names that incorporate, or are confusingly similar to, the verifi ed trademark.


For a limited time, aſt er the sunrise period of a new gTLD closes, the TMCH will notify trademarks owners when a third party attempts to register a domain name that is identical to a verifi ed trademark or a pre-selected set of variations, chosen by the trademark owner during the verifi cation process. T e registrant will also receive a notifi cation that the domain name they intend to register matches a verifi ed trademark.


Conclusion


.app, .africa, .porn, .web, .site and .shop, will create opportunities for many Internet users and enforcement headaches for most trademark owners.


In order to protect trademarks, the Trademark Clearinghouse (TMCH) has been set up. T e TMCH will allow trademark owners to submit their trademarks for verifi cation and, once verifi ed, it will allocate them a signed mark data (SMD) fi le or a verifi cation code. A trademark owner will then use this code when registering a domain name that matches its trademark, during the sunrise periods launched under new gTLD registries.


T e sunrise period allows a trademark owner to secure a domain name matching its trademark before the new gTLD is released to the general public. If the trademark owner does not register the domain name during the sunrise period, the domain could be registered by a third party.


If a trademark is not verifi ed by the TMCH it cannot be used by the trademark owner during the sunrise period.


What should trademark owners and their attorneys do to mitigate the risks?


Step 1


Identify registered trademarks that are worthy of protection within these new gTLDs. T e trademarks must be registered and used by the trademark owner. We advise selecting all trademarks that are core to business operations.


Step 2


Submit trademarks to the TMCH for verifi cation. T is can be done via two channels: directly with the TMCH or via a TMCH agent. A TMCH


40


agent is a company that submits bulk trademarks for verifi cation, oſt en off ering a pre-validation service to ensure that the trademark complies with the TMCH guidelines.


It is recommended that trademark owners and their attorneys use a TMCH agent to eliminate errors


Opinions diff er on the potential success of the new gTLDs, so it is essential that a company’s new gTLD strategy evolves as the programme unfolds, adding and removing TLDs based on market relevance and exposure.


and administrative work involved


in submitting a trademark to the TMCH. In addition, the TMCH agent will keep the SMD fi le safe and secure and assist with the declaration of use and proof of use, which are requirements when submitting the trademark to the TMCH.


A trademark can be verifi ed for one, three or fi ve years. T e period will only commence when the fi rst sunrise period has launched.


Step 3


Formulate a new gTLD strategy by selecting the gTLD sunrise periods that are relevant to the trademark and its market. T e cost of submitting a sunrise period application is set by the registry that operates the TLD and may diff er from TLD to TLD. It may be advisable to budget in the region of $100 to $200 per sunrise application.


T e new gTLD strategy will form the basis of a defensive registration programme, with a view to reducing the risk of a third party registering a domain name matching the trademark.


Step 4


Monitor sunrise period launch announcements, in order to submit an application within the prescribed time. T e TMCH agent should notify the trademark owner of sunrise period launch dates.


Trademarks Brands and the Internet Volume 2, Issue 2


Daniel Greenberg is a qualifi ed non- practising UK solicitor and South African attorney with more than 13 years’ experience in the fi eld of IP law. He is a co-author of Cyberlaw@SAII and has published several articles in leading IP publications. He oversees global operations and is directly involved in the coordination of Lexsynergy’s enforcement and brand protection services.


Trademark owners and trademark attorneys should start implementing a new gTLD strategy that will give some direction to the chaos that will shortly hit the Internet. An early submission to the TMCH will avoid a trademark being placed in a backlog queue, which may arise closer to the launch of the fi rst new gTLDs when trademark owners scramble to verify their trademarks. 


Daniel Greenberg is a director and in-house counsel at


Lexsynergy Limited. He contacted at: daniel@lexsynergy.com


can be


www.worldipreview.com


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