New trademark protection service TREx

0 min read
openprovider blog about domains

When ICANN released the new gTLDs a few years ago, special care was taken of trademark holders. They should be able to secure their names before opportunists could register them. This has resulted in the concept of a Sunrise phase. A Sunrise phase is required for every extension that wants to launch. During this period, only verified trademark holders can register their corresponding domain names in that specific extension. After the Sunrise ends, normally 30 to 60 days after launch, registration policies are less strict. Most domain names – including trademark names – are then available to everyone.

94% of trademarks unprotected

The Trademark Clearinghouse or TMCH for short is the organization ICANN appointed to verify each trademark. This organization has performed a study that shows that in more than 90% of all TLDs, 94% of the verified trademark names is still available for registration. This is a combination of three factors:

  • Lack of awareness (both of consumers and trademark holders).
  • An overwhelming number of new extension.
  • New extensions’ restrictions and prices.

Now, almost 5 years later, as the registration channel has involved and substantial investments were made to push their adoption and awareness, new gTLDs are becoming established. Unfortunately, this increased interest has come with an increase in fraudulent practices. A recent study, provided by WIPO, showed that new gTLDs have rose to being the subject 16% of cybersquatting disputes in 2016. This development will likely only increase as more TLDs become available.

To address this potential risk for trademark holders, the TMCH introduces a new service: TREx – the Trademark Registry Exchange. As an official agent of the TMCH, Openprovider is happy to offer you this service as well.

TREx

TREx is a complimentary service to the already existing protected marks list service of registry Donuts (DPML) and available exclusively for TMCH agents like Openprovider. Both services offer protection of the trademark name by blocking it in a number of extensions, rather than registering. This means that no one else can register the protected domain name. Of course, a trademark holder can always override this block and register the domain for active use.

The big advantage of TREx is simplicity and price. Through one order and at a much lower fee than regular registrations, TREx blocks the trademark name in a wide range of extensions.

The first release of TREx supports the following 40 extensions;

Geographical extensions Generic extensions
.bayern
.boston
.capetown
.cat
.cologne
.durban
.eus
.frl
.gal
.joburg
.koeln
.la
.london
.miami
.nrw
.osaka
.quebec
.ruhr
.scot
.tirol
.wien
.beer
.casa
.cooking
.earth
.fashion
.fishing
.fit
.garden
.horse
.moe
.rodeo
.surf
.tube
.uno
.vip
.vodka
.wedding
.work
.yoga

As you can see, TREx covers beyond the new gTLD program and has a big uptake among the geographical extensions. Do note that registries may exempt specific terms from being included in TREx, for example premium names. TMCH plans to extend the coverage of TREx continuously, but has promised not to increase prices more often than once a year.

The price for a TREx order at Openprovider is $199 per year for our New gTLD and Supreme members and $299 per year for regular customers. On average, this means that you pay under $5,00 per extension per year. TREx’s extensions and price will be reviewed annually by the TMCH. They will comminunicate any change in price and coverage timely. There is no additional charge for an override.

Applying for a TREx order

As TREx is a trademark-based service, validation of the trademark by the Trademark Clearinghouse is a first requirement. If you already have a verified trademark, then all you need is the SMD file. This is a sort of password that proofs validity of the trademark. If your customer validated its trademark at another TMCH agent that does not support TREx, we can of course assist you in getting TREx for that trademark name, simply by transferring the TMCH registration.

If the TMCH did not yet validate the trademark, you can easily apply for verification through your Openprovider control panel.

Once you have your mark verified, contact us for placing the TREx order. We will inform you about the domains that can be blocked before finishing the order.

Tip: consider a DPML order as well, to secure the same trademark name in all Donuts’ extensions.

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