Conquering the .world

February 5, 2015

Being a good lawyer means trying to find solutions to problems faced by clients in relation to protecting their brands. A recent example of this concerned our advising a client in relation to the registration of a domain name that was of particular significance to their business.    

The client wanted to obtain protection for .world, a new generic top level domain name (gTLD) in the domain’s sunrise period. Each gTLD registry operates a sunrise period of at least 30 days before the gTLD is offered to the general public. In this way, trade mark owners which have registered at the Trademark Clearinghouse are able to take advantage of registering in the sunrise period ahead of wider availability.

The .world domain had a 2 month sunrise period. The client became aware of the domain when the sunrise period had less than a month to run. The client had not yet registered with the Trademark Clearinghouse to be eligible to purchase the domain during the sunrise period. In order to be able to do so the client had to prove that it owned a trade mark for the name it wanted to protect and show to the Trademark Clearinghouse that the mark was in use.   

Easy? No?

In this case the client did not have a trade mark for the mark it wished to register.  So how were we going to obtain registration of a trade mark and then register the domain within this short time frame?  Given our extensive experience in trade mark matters and the timings of the processes in other jurisdictions, we considered those territories where registration can be obtained quickly. Initially, we considered Guernsey where the registration of a trade mark can be very quick.  However, the time frame was not quick enough given the time constraints of the sunrise registration period and the fact that the period ended shortly after the Christmas period.  So we decided to proceed with an application for trade mark registration in Lebanon on the basis that registration can be granted within 2 weeks.

But it can take longer for the registration certificate to be issued. We therefore worked with our local lawyers (with them working on our behalf at the Lebanese Trade Mark Office)   to ensure that we obtained a copy of the registration certificate as soon as possible.

Having successfully registered the trade mark in Lebanon, we applied to register our client’s trade mark at the Trademark Clearinghouse and then for registration of the specific .world domain. To our client’s delight, the applications were successful which meant that we had helped our client conquer the .world.

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