How Singapore businesses can nail their brands' worth online – Part Three

In previous parts of this series, we discussed why a domain address can be your strength, your weakness, an opportunity or a threat to your business locally, regionally and globally. You understand why having a defensive and expansive portfolio of domain names is important for your business.

We also touched upon what new gTLDs (generic Top Level Domains) are, that it is the next new wave happening on the Internet and that your business should get involved. Here is why you should hop on to fast track new gTLD registrations.

Get the domain name that you want

Each new gTLD is a new chance for individuals, SMEs and large companies to finally get the domain addresses that they want. Remember when you tried to register your first choice of domain name with .COM, .NET, .COM.SG and .SG but could not because they were already taken?

You then investigated for the availability of your second, third, fourth or latter choices, finally settling reluctantly on a domain address that was far too long, too far off from your brand name, difficult for your customers and even yourself to recall, and just was not good enough.

By registering your domain name with the new gTLDs, you can finally secure the domain address that your business deserves. One aim of the new gTLD project is to empower brand owners and SMEs (Small Medium Enterprises) with the ability to get the domain name they want.

Homegrown favorite Killiney Kopitiam (currently killiney-kopitiam.com)can finally register:
www.killiney.house
www.killiney.cafe and
www.kk.food and add them to their current portfolio of domain names (online real estate).

Customers can understand easily what these businesses sell at a glance www.lush.furniture (currently lush-lush.com)
www.lush.beauty (currently lush.com)
www.lush.radio (currently not having its own website) and
www.lush.spa (currently not having a unique website)

Local businesses that have taken on non-traditional English markets can include in their domain portfolio TLDs such as
机构 (Chinese for organization)
セール (Japanese for sale)
ابوظبي (Arabic for Abu Dhabi), etc.

If you are wondering how much to budget for the additional new domain addresses, unfortunately no prices have been released. Registration prices and other relevant prices of each new gTLD are only released by its respective Registry as and when the new gTLD opens for registration.

Therefore it is advisable that you create a watchlist of new gTLDs that are relevant for your business and based on what you currently spend per year on domain renewals, extrapolate a ballpark budget for registrations of new domain names.

Get the domain name you want before others

If you own a registered trademark, in other words, if you have registered your brand as a trademark with either IPOS (Intellectual Property Office of Singapore) or trademark offices of other jurisdictions at national-level, you can get to register your domain name before anybody else by making use of the sunrise phase of each new top level domain. Non trademark holders unfortunately can only wait to register in the general launch phase.

A brief explanation about sunrise and general launch phases: any new top level domain has at least two phases in their lifecycle – sunrise phase and general launch phase. The sunrise phase usually gives priority to trademark owners to register their trademark domain names before the public does.

To register each trademark as the top level domain name, trademark owners may be required to submit to each Registry documents such as business registration certificates, trademark registration certificates, photographic evidence of those trademarks being used - these evidence may be images of print brochures or annual reports; and make payment of sunrise application fees over and above domain registration fees.

The sunrise application fee goes to the Registry or its validation agent to verify your trademark data and documents. For each sunrise application the trademark owner has to submit these documents and make payment of both fees.

The general launch phase is registration phase for the public or companies without registered trademarks. In this phase, usually business registration certificate and proof of administrative contacts are required or none at all. There is no sunrise application fee to pay; only registration fees need apply.

How to?

If you own a registered trademark, have identified at least five new top level domains that you are interested in and would like to save money for your company, you may make use of ICANN’s less known initiative, TMCH (Trademark Clearinghouse). TMCH carries out the verification work of trademark data in place of all new gTLD Registries.

Therefore, when trademark owners wish to apply for their trademark top level domains in their watchlist, they do not have to submit trademark information over and over again and do not have to pay sunrise applications fees each time.

In addition to this, TMCH provides an alert service that applies only to trademark owners who have submitted their trademarks with TMCH. TMCH will alert trademark owners if any third party were to register a domain (with any new gTLD Registry) identical to their trademarks deposited with TMCH. This alert service is triggered if a third party “intrusion” occurs within the first 90 days of general launch phase.

We illustrate with the following fictitious example:

IP Mirror Pte Ltd has a registered trademark, “IP Mirror” and has identified a list of five new gTLDs to register their trademark top level domains with.

These are: クラウド (cloud), 网络 (web), TECH, SITE and LLC.

IP Mirror Pte Ltd has to wait for the sunrise phase of each of these TLDs to kick off in order to register its trademark top level domains. It is willing to wait but not willing to be hassled with the trouble of submitting trademark documents five times.

It comes to know about Trademark Clearinghouse and its function in verifying trademark documents on behalf of all Registries. Therefore, IP Mirror Pte Ltd decides to submit its trademark information to a Trademark Clearinghouse agent who then processes its TMCH submission.

The trademark “IP Mirror” is successfully verified by TMCH and is protected for a period of three years starting from 1 August 2013. IP Mirror Pte Ltd selected this period of three years as it understood that these five new gTLDs are on a queue to offer registration and would start taking registrations within 2 years or so.

If IP Mirror Pte Ltd’s trademark registration with IPOS expires and is renewed within the three years at TMCH, it needs to update this information with TMCH.

The gTLD 游戏 begins its 30-day sunrise phase from 15 October – 15 November 2013. IP Mirror Pte Ltd has not chosen 游戏 to be in its watchlist and so does not do anything. After the sunrise phase passes, the general launch phase begins.

On 30 November 2013, IP Mirror Pte Ltd receives notification from TMCH that someone elsewhere in the world has registered ipmirror.游戏. IP Mirror Pte Ltd analyses that their trademark “IP Mirror” is protected under classifications 38 and 42 , and the registrant’s intended use of ipmirror.游戏infringes on “IP Mirror”’s trademark protection under these two classes. IP Mirror Pte Ltd therefore decides to dispute this registration.

To register your trademark with TMCH, enquire with your local trademark clearinghouse (TMCH) agent, website manager or web hosting provider.

Singapore business owners, take action!

From the last quarter of 2013 and onwards for the next 2-3 years, business owners will see wave after wave of new generic top level domains sweeping through the Internet, altering the way consumers locate information.

Businesses will shift their naming of online domains; make use of new gTLDs in classifying their businesses and help customers understand their businesses at first glance. You will see these new domain addresses in mailers, on television and print advertisements and on the Internet.

Brands will inform you that they are now mrbean.soy; that you may preview genuine collections from latest chanel or you may enter a contest on sg-promotions.bmw in order to qualify for a free test drive on the BMW i3 in Singapore.

We would very much like local businesses to be riding on the crest of each wave and be at the forefront of this revolution on the Internet. It would be quite a shame and mismatch of expectations of ourselves if we had not.

After all, we are ranked first in Asia for most network-ready country , No.1 worldwide for the ease of doing business by the World Bank for 7 years running and first in the world for having the best protection of intellectual property.

It is time that our local businesses step up in protection of our Online Intellectual Property. The new generic top level domains and trademark clearinghouse are ready tools waiting for us to pick up on.

Owning a brand or a trademark does not automatically delegate you with the right to its domain name. Domain names are still on a first-come-first-serve basis. Now that you are armed with these knowledge and tools however, you are in a better position to know what to do.

Speak to your service provider about domain portfolio consolidation, the new gTLDs and TMCH today.

This article is last in a series of three to help inform local businesses of current and upcoming challenges on the Internet.

References:
https://entertainment.xin.msn.com/en/radio/lush995/default.aspx
https://www.massageatwork.com.sg/lush/lushspa.html
Internet Corporation for Assigned Names and Numbers
https://www.ipmirror.com
https://www.ipos.gov.sg
IPOS Classification 38: Electronic communications
IPOS Classification 42: Design and development of computer software
Global Information Technology Report 2009-2010
Investvine.com. 2013-01-28
The Global Competitiveness Report 2009-2010