Applications to register domain names ending with .africa, .joburg, .capetown. and .durban open 1 May 2014. It is envisaged that these new generic top-level domains (gTLDs) will exemplify Africa’s growth and development, presenting an opportunity to identify the African continent and the main South African cities online.

Introduction

The new gTLDs are managed by ZACR – ZA Central Registry. The introduction of the new gTLDs, while enhancing competition, will also entice cybersquatters; causing controversy and concern because the extent of the potential damage caused by cybersquatting is unknown.

Recommendation

Trade mark owners are advised to identify trade marks requiring vigilance and to apply for MVS validation. The introduction of the new gTLDs once again highlights the importance of filing, registering and maintaining trade marks and it is therefore highly recommended that trade mark owners continue to take all steps to retain and enforce their rights.

The three-phase launch period begins now:
1. PRE-SUNRISE: Validation

• Brand and business name owners have priority when it comes to registering gTLDs incorporating their trade marks or business names.
• It is necessary to validate a trade mark, company or business name with either the Internet Corporation for Assigned Names and Numbers (ICANN), the Trade Mark Clearing House (TMCH) or South Africa’s localised Mark Validation System (MVS).
• The MVS will verify a mark and allocate a validation token to be used during the Sunrise Period.
• While MVS validation does not automatically block unauthorised third parties from registering domain names, there are three distinct advantages to having MVS validation:
• Sunrise Period: Trade mark owners will be given preference to register a trade mark as a domain name prior to the registry opening up to the public. The Sunrise Period for these gTLDs domains is 90 days as of 1 May 2014.
• Claims Service: Trade mark owners will receive notification that an unauthorised third party is attempting to register a validated mark during the Landrush Period, allowing the trade mark owner to take the relevant recourse. Contested domains received during the Landrush Period will go to auction.
• Watch Service: Should an unauthorised third party register a trade mark as a domain name, the trade mark owner will be notified.

What documents are required for MVS validation?

• All marks added to the MVS are to be filed with a Declaration of Use in a prescribed format and a sample of proof of use
• Licensees should where relevant submit a Licence Declaration in a prescribed format
• Registered trade mark: Copy of registration certificate
• Unregistered trade marks: Declaration of use; two samples of proof of use
• Court-validated marks: Copy of court approval for mark
• Marks protected under Statute or Treaty: Copy of Source Statute
• Company and trust marks: Copy of company registration certificate or trust deed.

2.  LAUNCH: Sunrise and Landrush Application Periods – 1 May 2014

Sunrise Application Period

During the Sunrise Period trade mark owners with MVS validation tokens have priority to register the gTLDs incorporating their trade marks or company names for a period of 90 days.

Landrush Application Period

The Landrush Period is aimed at the registration of premium and generic domain names for which applicants do not have validation tokens. Examples of generic domains include “travel”, “tradeshow”, “transport”, “gardening”; “movies”. The Landrush Period will run concurrently with the Sunrise Period for 120 days.

3. GENERAL AVAILABILITY: 1 September 2014 to 31 December 2014

The gTLDs can be registered on a first-come, first-served basis.

Who gets priority?

When more than one application for the same domain name is received, priority is as follows:-

• Holders of validated marks receive priority over non-validated marks
• Holders of registered trade marks receive priority over pending applications
• Holders of trade marks on the African continent receive priority over trade marks outside of the African continent.

All contentious gTLD applications will go to auction.

Pricing

MVS: R800 per mark per year which includes-

• Validation
• Watch service activated from the launch
• Renewable annually for R100

Clients wishing to apply for MVS validation or wanting to find out more about trade mark registration can contact Donvay Wegierski and Janine Hollesen.

Written by Donvay Wegierski, Director; and Janine Hollesen, Director, Werksmans Attorneys