With the first sunrise periods open, TB&I provides some useful statistics on the new gTLDs and what the numbers mean for trademark owners.
After a long wait, the generic top-level domains (gTLDs) programme is finally kicking into life, so we bring you some interesting data on the new-look domain name system. Whether you want to know how many applications have been withdrawn or which sunrise periods are open, you’re in the right place.
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.
The 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.”
But what does this 20,000 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.
“The 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.
“The 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. The success of theTMCH shall depend on whether trademark holders are able to successfully protect their rights in new gTLDs and limit cybersquatting or efficiently tackle it.”
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. “The 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 sectorand the success of the gTLD,” explains Petillion. “If successful brands start eff ectively promoting their brand in a new gTLD, this gTLD could become the go-to gTLD for other businesses.
“The golden rule for off ensive registrations is quite simple: if a domain name in a specific gTLD can serve your business, go for it.”
It may seem a shame that 132 of the 1,930 applications were withdrawn, but it was inevitable that some applicants would pull their bids, says Weslow. There may be several reasons for this behaviour, including losing at auction for a contended gTLD or facing an early warning or advice from the Governmental Advisory Committee.
“However,” says Petillion, “one must not forget that some applicants participated in the new gTLD programme for purely defensive reasons. They may have chosen to recover part of their investment by withdrawing early in the process.”
This article was first published on 19 December 2013 in World IP Review
gtlds, trademark clearinghouse, sunrise periods, icann