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Expert EditorialIn case you haven’t heard – the .wine and .vin generic top-level domains (gTLDs) will be available soon.  Beginning in late January 2016, anyone can register available domain names within the .wine and .vin gTLDs for an expected annual registration fee of $49.  The jury is still out on whether acquiring a domain within one of the new gTLDs is a worthwhile investment – whether it makes sense for you is a function of risk tolerance, resource allocation, and other business considerations.  We’ve identified a few of the pros and cons below:

Pros

  • Registering your trademark as a domain within the .wine and .vin gTLDs as a defensive precaution may help you avoid future expensive dispute resolution proceedings if someone else obtains the domain encompassing your mark(s).
  • If your trademark is already taken on a .com, then now would be your chance to grab a yourmark.wine or yourmark.vin domain.
  • Your marketing team may be able to come up with creative advertising ideas based around a .wine or .vin domain.
  • Using a .wine or .vin domain readily indicates to consumers the nature of your business.
  • New gTLDs are still in their early days – and they may become more popular (and more trusted) as time goes on.

Cons

  • Registering your trademark as a domain does not prevent third-parties from registering misspellings, variations, or phonetic equivalents of your mark.
  • Studies suggest that consumers are more comfortable with existing gTLDs (i.e., .com) and hesitant to visit websites with non-traditional extensions, meaning customers may not be ready to trust a .wine or .vin domain.
  • New gTLDs have also not been fully embraced by trademark owners – many companies that have registered their mark as a domain within a new gTLD simply redirect the domain to their .com site.
  • Typical yearly registration fees for a domain within a new gTLD run from $15-150. These fees (which do not include service provider fees) can add up, especially if you’re registering multiple marks in multiple gTLDs.
  • There are indications that new gTLDs offer no discernable improvement in search engine optimization (SEO) results.

Talk to your company about whether registering a domain within the new .wine and .vin gTLDs is the right choice for you. Whatever you decide, keep in mind that (as with all domains) someone else could register the name that you want before you, and there may be nothing you can do about it after the fact, at least not without possibly significant expense. However, if you are a brand owner with a federally registered trademark, you have the opportunity to purchase the domain name encompassing your mark during the “Sunrise Period,” before sales open to the general public.

To take advantage of the Sunrise Period for .wine and .vin (from Nov. 17, 2015 – Jan. 16, 2016), you’ll need to record your mark with the Trademark Clearinghouse (TMCH) at https://secure.trademark-clearinghouse.com/tmch/public/.   Once there, you’ll fill out an application, provide evidence of your trademark registration and use of the trademark, and pay a fee of $150 per trademark per year of registration.  You’ll then receive an authentication key that you can use to purchase the domain name encompassing your trademark during the Sunrise Period.  Recordation with the TMCH also provides certain additional benefits.

Many companies can complete the TMCH recordation process on their own, or with the help of their IT personnel.  If needed, specialized service providers, such as Corsearch (https://corsearch.com/cgp/Products_Services/TMCH#HM) or – for those companies with large domain portfolios – MarkMonitor (https://www.markmonitor.com/topleveldomains/) can assist.  If doing it yourself or working with a service provider is daunting, and you want to take steps to try to protect your trademarks in the .wine and .vin gTLDs, we are also available to help by acting as your liaison with a service provider.

Emily PooleExpert Editorial

by Emily Poole

Emily Poole is an associate with the law firm of Owen Wickersham & Erickson in San Francisco where she focuses her practice on trademark, copyright and unfair competition law.

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