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While new gTLD domain registrations have surpassed the half a million mark, less than a quarter of corporate trademark counsel have made changes to their online enforcement strategies in reaction to the gTLD expansion, according to World Trademark Review’s annual Global Benchmarking Survey.
This week the battle for protection for geographical indications in the ‘.wine’ and ‘.vin’ strings heated up, with the European Federation of Origin Wines threatening an ongoing campaign should the strings be delegated without mechanisms in place.
On World Trademark Review we tend to shy away from ‘news round-up blogs’, but having spent the last week in Singapore attending the ICANN meeting, it is worth providing a few takeaways from the event.
According to figures released today, the Trademark Clearinghouse (TMCH) has delivered 500,000 Claims Notices to date. Of particular interest to trademark counsel will be the news that 95% of the queries for trademark terms triggering Claims Notices are not being followed through to a live registration.
It was inevitable that the issue of gTLD registries charging trademark owners excessive sunrise fees to register names in gTLD sunrise periods would be high on the agenda of the Intellectual Property Constituency (IPC). At today’s ICANN meeting in Singapore, however, ICANN’s ability to clamp down and prevent brand owners from being held to ransom was in doubt.
In the programme update session at ICANN’s Singapore meeting, the organisation announced that 182 new gTLDs have been delegated (as of this morning). While the rollout continues, a number of domain industry voices have expressed frustration at both the level of brand owner engagement with the Trademark Clearinghouse (TMCH) and the advice some lawyers are giving their clients.
The prospect of a permanent gTLD application window opening as early as 2015 was discussed in London yesterday as well as critical issues that need to be ironed out before such a move. One such area relates to the setting of sunrise fees, with criticism mounting on one applicant’s plans to charge trademark owners $25,000 per registration in the ‘.sucks’ sunrise.
Today officially marks the 25th anniversary of the World Wide Web. In addition to the many positive benefits of the electronic era, it is fair to say that the web’s silver jubilee also marks the anniversary of a new era of trademark challenges. The big question is, will the web’s next phase constitute a quantum leap or business as usual in terms of trademark practice?
In its latest bulletin, the Trademark Clearinghouse (TMCH) has revealed that almost 17,500 notifications had been sent to trademark holders to date, while brand owners themselves had submitted 26,802 marks to the TMCH.
While a number of rights protection mechanisms are built into the gTLD application process, several registries have offered additional protection options. For trademark counsel, the challenge is surveying the various offerings and deciding which best suits their needs. Time, then, to consider some of the available services.
The new era of cybersquatting appears to have begun, with reports suggesting that cybersquatters have wasted no time in grabbing brand-related domains in newly-released gTLD strings. For trademark counsel, the policing challenge is very much alive.
All eyes were on yesterday’s public availability of registrations in seven new gTLDs, not least to gain a sense of how brand owners are strategising for the expanded online space. In terms of the world’s largest brands, there seems to be an even split in terms of those who opted for Donuts’ domain protected marks list and those which have initially opted to stand on the sidelines.
Today, the first seven of Donuts’ new gTLDs have opened for public registration. While the extent of both public and brand owner engagement in these first strings will become more apparent in the coming weeks, for gTLD supporters and sceptics alike, today marks the first real opportunity to judge the wider appetite for the online expansion.
This weekend ‘.brands’ became a reality with Monash University making a little bit of history, becoming the first such application to be delegated to the DNS root.
With gTLD sunrises now launching on a regular basis trademark counsel should now be in the process of reviewing their online strategies. WTR previously wrote about the need to assess which gTLDs are of most relevance to your brand, whether for marketing/promotional opportunity or two defensively register in. One industry expert has outlined a data-based approach that can be undertaken.
The online challenges faced by trademark counsel and brand protection specialists are in a constant state of flux, with new gTLDs set to expand both the opportunities for, and risks to, brands. To assist trademark counsel in their online policing activities, World Trademark Review is pleased to announce Online Brand Enforcement: Protecting Your Trademarks in the Electronic Environment, the latest title to join the growing WTR portfolio. As well as hard copies being sent to WTR subscribers, the guide has today been published online.
ICANN’s new gTLD Registry Agreement has become the centre of attention of brand owners, with the organisation opening a new comment period on proposals to tweak the agreement to better reflect the operating nature of ‘.brands’. Meanwhile, the Intellectual Property Owners Association has voiced trademark owner concerns over elements of the current agreement.
This week the 60-day sunrise periods for seven new gTLDs officially opened. The strings represent the first Latin scripts open for registration in the new gTLD programme and, as such, sparked a spike in press coverage of new gTLDs as media outlets turned their attention to the availability of new strings. For trademark counsel who have not yet considered their tactics for the expanded space, it’s time to talk budgets.
The debate over additional rights protection mechanisms for IGOs and INGOs in the expanded gTLD space has been hotly contended. While ICANN’s New gTLD Program Committee has voiced opposition to protection for IGO acronyms, the GAC has issued a communiqué reiterating its position that such mechanisms are necessary. INGOs may wish to take the lead themselves rather than wait for the ICANN process to play out.
Details have emerged of the first example of the Uniform Rapid Suspension in action, with Facebook successful in its effort to suspend the ‘.facebok.pw’ domain name. While a straightforward decision for the examiner, the news rounds off a significant week for the expanded gTLD environment.
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