<.wine> gTLD on the Horizon; Protect your Brand Name
In 2013, the Internet Corporation for Assigned Names and Numbers (“ICANN”), the non-profit organization responsible for managing the Internet’s domain identifiers, began rolling out new generic top-level domains (“gTLDs”). The most popular gTLD is <.com>. Specific domain names are registered under a specific gTLD, e.g., <gallo.com>.
However, ICANN believed that in time the <.com> gTLD would begin running out of domain name options, and that the Internet could be better organized if gTLDs were created around subject matter, such as <.plumber>, <.church>, <.porn> and <.wine>. Therefore, ICANN decided to introduce these new gTLDs by selling them to third-party domain name registrars to register and operate for $185,000 each. ICANN received applications for over 1,900 new gTLDs and many of them have gone into active status.
Many have questioned the need or practicality of these new gTLDs believing ICANN’s real motivation being to raise money. Indeed, Esther Dyson, the founding chairperson of ICANN, wrote that the gTLD expansion “will create jobs [for lawyers, marketers and others] but little extra value.” Many believe that these new gTLDs will add no more value than did the introduction of gTLDs like <.aero> or country code TLDs such as <.tv> (Tuvalu, in case you wondering). In fact, many feel that this is simply another opportunity for domain name registrars and unscrupulous domain name pirates to make money at the expense of trademark owners.
Since domain name high jacking has been fairly prevalent with the <.com> gTLD, it was determined that some preventative measures should be available for trademark owners to obtain their trademarks as domain names within these new gTLDs before the gTLDs are introduced. Enter the Trademark Clearinghouse (“TMCH”).
The TMCH is a place where trademark owners can “register” their trademark rights in order to obtain their trademarks in domain names for gTLDs before the public has a chance to do so. How does it work? A trademark owner goes to the web site for the TMCH located here. The trademark owner then fills out an application, provides evidence of a trademark registration in a country of the world, along with evidence of use of the mark, and then pays a fee of $150 per trademark per year of registration.
Assuming the trademark owner provides all the correct information, the trademark owner is then provided with a special authentication key that it can then use to “buy” a domain name identical to its trademark before the general public during a special Sunrise period when new gTLDs are introduced. As recently evidenced with the registrar for the new gTLD for <.sucks>, which charged a Sunrise registration fee of $2,499, this can be viewed merely as an attempt to extort trademark owners. However, other gTLDs have offered Sunrise period registration fees for as low as $20.
So why does this matter to wineries? There are two gTLDs that have been applied for specific to the wine industry — <.wine> and <.vin>. Both of these gTLDs have been awarded to the largest, most organized and most financially-backed registrar of new gTLDs, Donuts. The <.wine> and <.vin> gTLDs have been held up in procedural wrangling with the EU because wine appellations of origin could not be protected in the TMCH and there were fears that domain names such as <champagne.wine> or <bordeaux.vin> would be swiped up by parties for individual benefit or misuse. However, we have it on good authority that these disputes have been worked out and that we can expect the opening of the <.wine> and <.vin> Sunrise periods possibly as early as fall of 2015.
Therefore, all brand owners that are interested in securing the <.wine> and/or the <.vin> domain names for their brands during the Sunrise period should move with diligence in registering their trademarks in the TMCH so that they are ready with their authentication keys once the Sunrise periods open. Again, is this necessary? That depends on whether you think that <.wine> and/or <.vin> will catch on with consumers for locating web sites for wine brands. The gTLDs could go the same way as <.aero> and die on the vine. However, the risk is if the gTLDs do catch on, then brand owners could be left fighting or paying domain name pirates to get back their <trademark.wine> domain names, which will cost thousands of dollars more than registering in the Sunrise period. So, the question of whether to register your brand in the Sunrise period is a business decision based on a gamble as to whether you think <.wine> and/or <.vin> will succeed or fail.
For those wineries not wanting to deal with the TMCH registration process, contact your trademark counsel for assistance. This will certainly add to your costs, but it will relieve you of the burden of maneuvering through the TMCH registration process. DP&F is offering this service on a flat fee basis in partnership with Corsearch, an authorized TMCH agent. For more information please contact Scott Gerien via email.