Pieces of the cake


Whichever strategy and process a brand ends up employing, it is extremely important that they understand the basic fundamentals of the new gTLD programme, says Anthony Beltran of 101domain, Inc.

Navigating the new gTLD programme created by the Internet Corporation for Assigned Names and Numbers (ICANN) can be a daunting task. Overwhelming to most who are just now beginning to look at this unprecedented expansion, and difficult to navigate for those who have been following it for some time, 101domain has been working with its clients, partners, and registries for months to guide clients through their strategies and serve as their partner to get the most out of the programme, and more importantly, to avoid being left behind.

Before you can start utilising the many rights protection mechanisms (RPMs) built into the programme to protect brands and trademark owners, you must validate your trademark with the Trademark Clearinghouse. The TMCH serves as a centralised trademark validation system, which gives you a validation file known as a signed mark data (SMD) file. The SMD file is used to prove to various domain name registries that you are, in fact, the owner of the trademark being used to apply for a domain name or an RPM product.

With your valid SMD file in hand, you are able to participate in a number of RPMs designed to protect your trademark rights as various new domain name extensions are launched. The first new TLD launched in January, and we are now seeing five to 10 new domain name extensions launching every week, until a total of nearly 650 are released to the public over the next 18 months.

Once you have an SMD file, you should evaluate which blocking products and options are a right fit for you. Donuts and Rightside registries offer what they call a Domain Protected Marks List. A DPML is a product that blocks others from registering a domain name in any domain name extension offered by each of these registries. Donuts boasts 200 TLDs in its portfolio, while Rightside will operate 30 to 50. These two combined equate to more than a third of the entire programme. A DPML is by far the most cost-effective method in any brand protection scheme.

From there, your attention should turn to understanding and participating in the launch cycle of a new TLD—sunrise, landrush or early access, then finally, general availability.

Each new TLD launch begins with its sunrise phase. This phase exists exclusively for trademark owners that possess a valid SMD file for their marks. This SMD file is used to apply for a domain name in a sunrise phase prior to anyone who does not have a legitimate claim to a trademark matching yours. As a trademark owner with a valid SMD file, you get the first opportunity to register a domain name matching your trademark in each and every publicly available new TLD launched. This is essentially your right of first refusal. If you apply, expect to pay a one-time application fee plus a normal registration fee for the domain name.

Most sunrise phases last for 60 days. If there are multiple applications, the applying parties will then go to auction and the prevailing party will purchase their right to the domain name. For those sunrise phases lasting only 30 days, the first to apply for a name will get the name. If you have blocked a name using a DPML, then you have the option to override the block for any TLD after paying a fee to do so. After the sunrise phase ends, domain names will be allocated and available for use.

Next up is landrush, or as some registries and registrars such as 101domain call it: the early access phase. This phase is open to the public and allows anyone to apply for a name, typically a highly sought after name, at premium ‘early access’ prices. These early applications greatly increase your chances for obtaining a name for which you do not have a validated trademark and therefore cannot purchase during the sunrise phase. This phase typically lasts for seven days and names are allocated either on a first-come, first-served basis or go to an auction if there are multiple applicants.

Finally, after landrush, we have what is called general availability. This is the official starting point for a new TLD when it released to the general public at standard prices where only a registration fee is paid. This phase is always first-come, first-served.

Whichever strategy and process you end up employing, it is extremely important that you understand these basic fundamentals in how the process plays out. Once you have a grasp on this, the rest of your strategy simply becomes a matter of selection and execution. It’s always important to employ a competent registrar that is not only up to the task, but is quick to respond and well connected with all the various registries. You’ll save a lot of headache and money later if you do.
Features
The latest features from IPPro The Internet
As the UK shifts closer to its eventual departure from the EU, the country’s intellectual property industry assesses its options and looks to avoid a cliff edge. Kate O’Rourke, president of the Chartered Institute of Trademark Attorneys, explains
Vladimir Biriulin of Gorodissky discusses the technical knowledge that the Russian IP Court has developed over its four-year tenure
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
With EU copyright reforms coming to a head, Barney Dixon speaks to Raegan MacDonald to see how the landscape has changed in recent months
Le Quang Vinh of Bross & Partners examines the substantive changes to criminal law in Vietnam that promise to rein in counterfeiting and piracy
As EU copyright reform continues, publishers are insisting the press publisher’s right will be good for business and won’t harm consumers. Angela Mills Wade of the European Publishers Council explains
ECTA’s copyright committee was formed in response to the modernisation of the EU’s approach to copyright. Chair Dr Christian Freudenberg tells Mark Dugdale what this has meant in practice
ECTA has ramped up its efforts to ensure that IP rights are heard in Brexit negotiations. But this isn’t all the trademark association has been up to in the past year, as Ruta Olmane explains
William Dyer III and Bea Koempel-Thomas of Lee & Hayes examine TC Heartland v Kraft and the arguments put forward in support of each party
Country profiles
The latest country profiles from IPPro The Internet
While Indian fair use is not explicit, provisions exist for the fair dealing of copyright. Rohit Singh and Tina Canneth of Abu-Ghazeleh Intellectual Property delve deeper
An interpretation of the current events exception in Radosavljević is creative, say BDK Advokati's Bogdan Ivanišević and Marko Popović
IPPro Patents

Visit our sister site
for all the latest IP patents news and analysis

ippropatents.com
Yu-Li Tsai of Deep & Far examines how damages are calculated in patent infringement litigation
A recent amendment will make costly annulments a thing of the past. Gilberto Sanchez of SPECyF explains
New legislation in Turkey promises a swathe of trademark changes. Dr Cahit Suluk of Cahit Suluk Intellectual Property Law Firm explains
A trademark decision clarified ‘against the public order’ as an absolute ground for refusal. Sár and Partners – Danubia Patent & Law Office reports
Bogdan Ivanišević and Marko Popović of BDK Advokati review the recent squabble about copyright protection for ‘routinely created photos’
Alston & Bird recently expanded with a new office focusing on counselling Chinese companies on US intellectual property law. Yitai Hu explains what patent owners face when working across borders
Interviews
The latest interviews from IPPro The Internet