Trademark domain offers professional identity service

However, according to Dale Healy, partner at Adams & Adams, the concern is that unscrupulous third parties may successfully attempt in registering well-known trademarks to try and establish an association between the trademark proprietor and themselves. Whilst there are mechanisms in place to address intellectual property violations, prevention is always better than cure.

Registration phases

There are three phases within which a .pw domain name can be registered.

The first phase, called the Sunrise phase commenced on 3 December 2012 and lasted until 15 February 2013. During the Sunrise phase, only trademark proprietors who had registered trademarks on or before 1 December 2012 could apply for corresponding domain names in the .pw TLD. Before applying to register the domain, the trademark was validated by TM.Biz at no cost to the trademark proprietor. The trademark proprietor may apply for domain names which are an exact or a close match to the trademark. The registry will allow for the registration of domain names which represent a common misspelling or abbreviation of a validated trademark as well as a prefix or suffix to the validated trademark. If more than one trademark proprietor applies for the same domain name, the domain will be auctioned and awarded to the highest bidder.

The second phase is called the Landrush phase. The Landrush phase opened on 18 February 2013 and closes on 18 March 2013. During the Landrush phase, anyone can submit applications for .pw domain names. There are no restrictions on the persons that can apply for domain names or the number of names that can be registered. If more than one applicant applies for the same domain name, the domain name will be auctioned off to the winning bidder.

The third phase is referred to as General Availability, which commences on 25 March 2013. During this phase anyone can apply for .pw domain names and the domain names will be allocated on a first-come first-serve basis.

Complaints

.pw TLDs are subject to the Uniform Domain Dispute Resolution Policy (UDRP) of ICANN. Accordingly, a trademark proprietor can file a complaint in terms of the UDRP to a .pw domain name that is identical or confusingly similar to its trademark, which has been registered and is being used in bad faith.

"We look forward to assisting clients who are interested in registering their trademarks in the .pw space. The cost to do so will be between R3000-R5000 for each domain name registered, excluding the auction costs (if applicable).

"Whilst the Sunrise is over, we strongly recommend that trademark proprietors apply during the Landrush period, because they may still be able to outbid the other applicants who apply for the same domain name. When the Landrush period expires, domains in the .pw space will be allocated on a first-come first-serve basis. If a domain name incorporating a trademark is allocated to a third party, trademark owners will have to resort to filing a complaint in terms of UDRP.