(English) Does a new GTLD warrant the TMCH procedure?

dimanche, 26 janvier 2014

(English) Does a new GTLD warrant the TMCH procedure?

By Eric SCHAHL & Colombe DOUGNAC

Some ideas for protecting against overzealous domain name promoters!! The key question is whether or not you stand to benefit from some of the new extensions If the answer is “no”: Then you should carefully consider whether the TMCH is necessary or if it is not wiser to avoid this expense. You have 2 options: • Do nothing: The advantage of this option is that you don’t pay any money up front. However, you run the risk of third parties reserving domain names that you will only detect after you have suffered damages (such as a loss in the ranking of your website on the Internet, a competitor who has reserved the right generic domain name, etc.) • Or, monitor the extensions which are related to your business: The disadvantage here is the (small) cost of the monitoring service, but the advantage is that you can detect potentially problematic situations before they arise and thus take pre-emptive action to settle the case (either an amicable resolution, the UDRP process or court action). This monitoring service can be performed through the TMCH system but, in this case, it will be strictly limited to domain names that are identical to your mark. If the answer is “yes”: There are two possibilities. • If the domain name of your interest is a combination “generic name + extension” (for example: pizza.express), the TMCH is not absolutely mandatory. We must caution against registering your trademarks with the TMCH if you know that you will not take any further action (be it a registration or action against a third party), as your inaction will be evident and can be held against you. • If the domain name of my interest is a combination of my trademark and an extension, then yes! The TMCH procedure is indeed for me because I would have the following advantages: I would qualify for the sunrise period, receive priority-level notification of reservations bearing my trademark, and third parties would be notified when they reserve try to reserve my mark. In conclusion: – You should resist offers from profit-hungry agencies! – Only choose the TMCH option if it makes sense to do so and if it is in keeping with your strategy. It is better to do nothing at all than to sign up with the TMCH and then do nothing!

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