Domain names/which strategy for the new TLD’s?

News: Notification and blocking systems reserved for trademark holders

  • Submitting the trademarks to the TMCH for either one or five years
  • Protecting the trademark on the extensions managed by the American company Donuts which manages 200 extensions, the majority of which are made up of generic terms, for an initial period which cannot exceed five years and is renewable annually, the protection can only be used for brands that have been registered with TMCH
  • Protecting the trademark on the extensions managed by the American company United TLD (for example .gay) which manages 37 extensions, the majority of which are made up of generic terms, for an initial period which cannot exceed one year and is renewable annually, the protection can only be used for trademarks that have been submitted to the TMCH

The firm’s advice

Submitting the trademarks to the TMCH has to be done prior to blocking these trademarks from registration at the second level across all Donuts or United Ltd extensions, using the DPML (Domains Protected Mark List)

  • Prevents a third party from registering a Domain name identical to the trademark under one of the extensions of Donuts’ or United Ltd.
  • The owner of the brand, who has registered and protected the brand with TMCH can then choose to register a domain name under one of its extensions by asking for (1) the Domain name to be released by paying 109 euros (before tax) and (2) registering, annual fees for this being approximately 28 euros (before tax) for one year not including fees
  • However this system is not reserved exclusively to one rights holder on the same name, meaning that other rights holders of the same trademark can put in place the same strategy, followed ultimately by a release of certain registrations on the same denomation, under one of the extensions of Donuts/United Ltd

It is advisable to clearly define a registering strategy, choosing extensions under which the trademark will be registered, according to two main criteria:

  • Relevant extensions, according to activity
  • Extensions that will appeal any entity or individual such as .mail