Not for everyone
Trademark portfolio strategy
Many new generic top-level domains (gTLDs) have been launched since 2014, allowing the registration of domain names under a variety of TLDs – in particular, industry-related ones, such as '.shop', '.restaurant' and '.photography'. As of February 2016, almost 14.5 million new sub-level domain names have been delegated under new gTLDs.
Sub-level domain names under the new gTLD '.insurance' will soon be available – a development that will be of particular interest for the insurance sector, as it will allow domain names such as '[Yourbrand].insurance' and '[Yourproduct].insurance'. The '.insurance' domain names are expected to become generally available in June 2016, preceded by a sunrise period (ie, a preferred upfront delegation of domain names to owners of registered trademarks before they become generally available to the public) in May 2016.
The operator of the '.insurance' gTLD(1) was established in 2011 by a coalition of banks, insurers and financial services trade associations from around the world. In 2015 this operator launched the restricted gTLD '.bank'. According to the operator's guidelines, only verified members of the global insurance community (eg, insurers, agents, agencies, brokers, brokerages and other equivalents) will be able to register domain names under the gTLD '.insurance'.
In the general availability phase in June 2016, '.insurance' domain names will be allocated among eligible applicants on a first-come, first-serve basis. However, with a respective entry in the Trademark Clearinghouse (TMCH), eligible trademark owners can secure their brands as domain names upfront in the so-called 'sunrise phase' starting in May 2016.
The TMCH is a tool which allows trademark owners to benefit from specific services, the most relevant of which are sunrise services (allowing participation in sunrise periods) and claims services (notifying trademark owners when someone registers a domain name matching a trademark entered in the TMCH).
However, the TMCH extends only to registered trademarks that have been actively entered into the system. Moreover, the TMCH relates only to domain names that exactly match the entire word elements incorporated in the registered domain names.
The functionality and benefits of the TMCH have triggered domain name and trademark portfolio-related questions:
- Which trademarks should be entered into the TMCH to fit into the overall domain portfolio and online brand enforcement strategy?
- Does the trademark portfolio contain trademark registrations suitable for the desired purpose or might the portfolio require amendments?
- Are preventive steps needed in order to prevent third parties from registering potentially critical domain names?
In addition, brand enforcement considerations have also been raised:
- Consider setting up additional domain name monitoring in order to act quickly against possibly problematic domain names.
- The fact that the TMCH is dependent on a valid trademark registration requires a close link to the trademark administration docketing system.
For further information on this topic please contact Michael Woller at Schoenherr by telephone (+43 1 5343 70) or email ([email protected]). The Schoenherr website can be accessed at www.schoenherr.eu.