GTLD DATA
DATA (CORRECT AS OF DECEMBER 13, 2013)
• Applications filed (June 2012): 1,930 • Applications withdrawn: 132 • Not approved: 3 (Tai; Gcc; Africa) • Initial evaluation (IE) complete: 1,757 • In IE: 2 • Extended evaluation (EE) complete: 16 • In EE: 19 • Objected to: 204 • String similarities: 657 • TMCH registrations: around 20,000
Sunrises are going to come thick and fast in 2014, providing trademark owners with some potential headaches over where to register defensively. Our data provide a snapshot of the current gTLD sunrise landscape, as well as some useful tips on what strategies to pursue.
Te Trademark Clearinghouse (TMCH), a one- stop shop for validating trademarks registered in the sunrises, is one option for rights owners seeking to protect their brands online. With nearly 20,000 trademarks in the TMCH, we ask what the numbers actually show us.
TMCH progress report
Since it opened in March 2013, the TMCH has received nearly 20,000 registrations. With the first sunrise periods open, it is positive to see trademark owners and their agents filing applications in line with these initial launches, says Jan Corstens, project director of the TMCH.
“Now that the official rollout of the new gTLDs has begun,” he adds, “rights holders have an undeniable reason to ensure that their IP is safeguarded in this expanding online space. Entering marks into the TMCH is a vital first step towards being protected in the coming months and years.”
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But what does this figure tell us? To put things in perspective, we can look to the US, where nearly 18,000 trademarks have been registered in 2013. Considering this statistic, says David Weslow, partner at Wiley Rein LLP, it appears that a mere fraction of trademarks from around the world have been registered with the TMCH.
“Te registration statistics suggest that many trademark owners may not yet be aware of the TMCH and the benefits conferred by registration, or that perhaps many trademark owners are pursuing selective TMCH registration strategies to support subsequent second-level domain registration strategies,” he says.
Flip Petillion, partner at Crowell & Moring LLP, says that while the 20,000 figure is lower than he expected and that he would be surprised if it’s the final number, it may be explained by the many delays to the gTLD programme.
“Te delays have caused many trademark holders to adopt a ‘wait and see’ approach,” he says. “As we now see new gTLDs entering the Internet root zone, trademark owners may adapt their online strategy and the number may quickly go up.” In any event, Petillion adds, “I do not think success should be measured by the number of registrations in the TMCH. Te success of the
Trademarks Brands and the Internet Volume 2, Issue 2
TMCH shall depend on whether trademark holders are able to successfully protect their rights in new gTLDs and limit cybersquatting or efficiently tackle it.”
Sunrise periods
With the first sunrise periods opening, brand owners must decide whether—and to what extent—they register defensively to protect their trademarks. Of those listed, do any sunrise periods pose any particular threats?
“Defensive registration strategies will vary, with brands taking into consideration the correlation between the brand and new gTLD strings, online brand promotion plans and the history of cybersquatting activities related to the brand,” Weslow says. And it will be impossible—or at least extremely costly—for a company to register all its brands defensively in every gTLD, notes Petillion. “Te question of whether to register domain names defensively should depend on the risks associated with someone else abusing that domain name.”
Sunrise periods offer business opportunities too, and brands should be looking at which gTLDs to target for offensive registrations. Again, the level of investment will vary from brand to brand. “Everything depends on the brand, the sector
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