The Sunrise periods for the .wine and .vin generic top-level domains (gTLDs) opened November 17, 2015.
Say that again, but in plain English, please…
Over the past few years, the number of available generic top-level domains, or gTLDs (e.g., .com, .net, .org) has been expanding. ICANN, the international body charged with organizing the Internet’s domain name system, has implemented a process that allows anyone (well, anyone that can afford the $185,000 application fee) to apply to operate a new gTLD with an extension name of its choosing. Successful applicants manage their new gTLDs as domain name registrars, allowing interested users to purchase second-level domain names (the words/letters to the left of the dot in .com, .net, etc.) within the gTLD. Hundreds of new gTLDs, such as .company, .beer, .flowers, and .sale, have already been approved and are available for public registration.
Why brand owners are paying attention…
While the new gTLDs create novel marking and branding opportunities, the expansion also increases the risks of trademark infringement, cybersquatting, typosquatting, and other types of online piracy. Many trademark owners – faced with the prospect of a competitor or an unhappy customer now able to register their brand names in any one of hundreds of gTLDs – are bemoaning, rather than applauding, the new gTLDs. The increase in available domain names means more venues for infringement, and thus more trademark policing efforts.
To address the concerns of trademark owners, ICANN created the Trademark Clearinghouse (TMCH). Brand owners that record their federally registered marks with the TMCH have access to two protective measures: Sunrise periods and the Trademark Claims service. When a new gTLD opens, the Sunrise period allows brand owners to purchase the domain name encompassing their trademark 30 days before it becomes available to the public. Note, however, that the owner can only record its exact trademark, meaning the owner will not have early access to domains covering the pluralized or misspelled versions of its mark during the Sunrise period. The Trademark Claims service is a notification system that warns (but does not prevent) a prospective domain name registrant of a conflict if he/she attempts to register a domain identical to a mark recorded with the TMCH. If the prospective registrant disregards the warning and purchases the domain, the brand owner receives a notification.
Why wine brand owners are paying attention….
On November 17, 2015, the Sunrise periods for the .wine and .vin gTLDs will open. Although several regional wine associations (including the Napa Valley Vintners and Sonoma Valley Vintners) have been vocal in opposing the release of these gTLDS, they are moving ahead, leaving wine brand owners with the option of protecting their brand in the TMCH or hoping that a third-party has no interest in registering their brand as a domain name under .vin or .wine.
Should wine brand owners register their brands within the new .wine and .vin gTLDs?
Unfortunately, there is no simple answer – and it may come down to a business (rather than legal) decision. Studies suggest that consumers are more comfortable with existing domains (i.e., .com) and are hesitant to visit websites with non-traditional extensions, meaning your customers may not be ready to trust a .wine or .vin domain. There are also indications that new gTLDs offer no discernable improvement in search engine optimization (SEO) results. To date, many of the companies that have registered their brands within a new gTLD simply redirect this new domain name to their main .com company site.
Yet, new gTLDs are still in their early days – and they will conceivably become more popular as time goes on. If your brand name is already taken on a .com, then now would your chance to grab a yourmark.wine domain. Your marketing team might also be able to come up with creative advertising ideas based around a .wine or .vin domain. But the most important reason to register your brand as a domain on .wine and .vin is likely for defensive purposes. If an undesirable third-party obtains the domain encompassing your mark, then the only way to remedy the situation may be through expensive dispute resolution proceedings.
How to secure the domain name for your brand within .wine or .vin…
Federally registered trademark owners that want to secure the domain names encompassing their trademarks under the .wine or .vin gTLD should act now, before the Sunrise period closes on January 16, 2016. After the period closes, the general public will be able to purchase these domain names.
The first step to securing the domain name encompassing your federally registered trademark is to go to the website for the TMCH (https://secure.trademark-clearinghouse.com/tmch/public/). Once there, you’ll be prompted to fill out an application, provide evidence of the trademark registration and use of the trademark, and then pay a fee of $150 per trademark per year of registration. The TMCH will then assign you an authentication key that you can use to purchase a domain name identical to your trademark during the Sunrise period.
While many companies may be able to complete the TMCH recordation process on their own, or with the help of their IT department, specialized service providers also exist. For example, Corsearch can help you both record your trademark with the TMCH and register it within the .wine and .vin gTLDs during the Sunrise Period (https://corsearch.com/cgp/Products_Services/TMCH#HM). For companies with larger trademark portfolios that are interested in registering multiple domains within multiple gTLDs, MarkMonitor can assist (https://www.markmonitor.com/topleveldomains/services/TMCH_services.php). If doing it yourself or working with a non-legal service provider is daunting, and you want to take steps to try to protect your brand in the .wine and .vin gTLDs, we are also available to assist you by acting as your liaison with an outside service provider.
If you’d like to know more about the new gTLDs and the risks / benefits of recording your federally registered trademark within the TMCH, contact your primary attorney at OW&E.
Posted by Emily Poole
Read More: “New .wine and .vin Domains About to Launch“