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New trademark protection service TREx

When releasing the new gTLDs a few years ago, special care was taken of trademark holders: they should be able to secure their names before opportunists can register them. This has resulted in the concept of a Sunrise phase, 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 and most domain names – including trademark names – are available to everyone.

94% of trademarks unprotected

The Trademark Clearinghouse or TMCH for short is the organization appointed by ICANN 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 lack of awareness (both of consumers and trademark holders) and an overwhelming number of new extensions on the one hand, and the extensions’ restrictions and prices on the other hand.

Now, almost 5 years later, new gTLDs are becoming established as the registration channel has evolved and substantial investments were made to push the adoption and awareness of the Program. Unfortunately, this increased interest has come with an increase in fraudulent practices. A recent study, provided by WIPO, showed that new gTLDs rose to 16% of cybersquatting disputes in 2016 which will 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 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 noone 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 is simplicity and price: with one order and at a much lower fee than regular registrations, the trademark name is blocked in a wide range of extensions.

The following 40 extensions are supported in this first release of TREx:

Geographical extensionsGeneric 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 see, TREx covers beyond the new gTLD program and has a big uptake among the geographical extensions. 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 promises not to change pricing more often than once a year.

The price for a TREx order is $299 per year or even as low as $199 per year for New gTLD or Supreme Members. This is an average price of under $5,00 per extension per year. The included extensions and the price will be reviewed annually by the TMCH and any price and coverage change will be communicated 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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