The Sunrise Dilemma

By Stuart Fuller


One of the most positive industry developments of the new gTLD programme has been the creation of the Trademark Clearinghouse (TMCH), a single database of validated trademarks that has enabled brand holders to simplify the process of securing their intellectual property in each and every new gTLD.

As of the 22nd September, there were 38,502 trademarks within the TMCH, which have generated over 195,000 claims notices or an average of five claims notices per trademark.  As a method of monitoring for IP holders, the TMCH is a very cost effective solution and one can only wonder why more organisations have not used the service to its full effect.

What is clear from a recently published report from ICANN is that trademark holders aren’t using the TMCH offering to register their names in the sunrise period.  In fact, on average less than 1% of registrations are being made in the trademark holder’s only period.  There are some exceptions such as the highly defensive dotAdult and dotPorn, but overall the take up is very low.  In the early weeks of the programme sunrise registrations were high as the fear of cybersquatting was pervasive among brand holders.  A number of organisations, including Amazon, made registrations in the Trademark Sunrise period for the first few weeks, resulting on registrations such as Amazon Web Services registering, and  Brand holders soon saw that such blanket registrations weren’t necessary, especially with the coverage offered by Domains Protected Marks List (DPML) services from Donuts and Rightside Registry.

Whilst there were some early cases of brands being cybersquatted, the presence of a trademark clearinghouse registration didn’t seem to impact whether a brand was infringed or not.  Major brands such as Lufthansa and Nissan Motors found themselves fighting an ongoing battle against the IP infringers, using the new Uniform Rapid Suspension (URS) process to suspend the domain names, which in comparison to a TMCH registration and a DPML is significantly more expensive and damaging to their brands based on the number of cases that have been filed.

So have brand owners simply got gTLD fatigue and are therefore not registering during the sunrise period?  That may be part of the issue, although it could also be due to the adoption of Rights Protection Mechanisms such as DPML, or simply that the current gTLDs that have been released do not have the same broad appeal that others may have.  It will be interesting to see the numbers behind dotLaw, for instance, when sunrise closes next week as well as some of the most popular TLDs that are due for release at some point in the future such as dotMusic, dotShop and dotApp.