.eu domain name registration - sunrise opens 7 December 2005

[VeryMark]

The new .eu domain names registry (EURid) opens on 7th December 2005. As from this date, there is a two month period during which owners or licensees of registered trade marks and geographical indications and designations of origin within the European Union (EU) can apply for corresponding .eu domain name registration before anybody else.

The only exception is that, if you have trade mark registration for a logo or other picture trade mark, you can apply for .eu domain name registration corresponding to a word which is clearly separate from and predominates over the picture element. There is a 40 day period within which to provide documentary evidence of corresponding trade mark registration within the EU, i.e. registration within an EU member state or a Community trade mark registration covering the whole of the EU, it matters not which.

After this first phase 1 ‘sunrise’ period, there is a second phase 2 two month sunrise period starting on 7th February 2006 during which owners of other rights such as company names and unregistered trade marks may apply in advance of others. Again, there is a 40 day period within which to file documentary evidence of the right relied on.

After this, all other qualifying persons may apply as from 7th April 2006 (the so-called ‘landrush’).

Only persons, firms, companies or other bodies within the EU may apply for .eu domain name registration, namely, undertakings having their registered office, central administration or principal place of business within the EU, organisations established within the EU, or natural persons resident within the EU, and the address submitted in the application must be within the EU.

The requirements for filing documentary evidence of the registered trade mark or other right relied on are extremely rigid and formalistic. For example:-

i. each application must be supported by one (1) set of documentary evidence; it is not permissible to combine different sets of documentary evidence for different applications in one single package or envelope;
ii. the size of the paper must be DIN A4 or Letter format;
iii. documents must be printed on opaque white paper;
iv. the pages must be consecutively numbered;
v. paper must be printed on one side only;
vi. documents must be humanly readable when scanned;
vii. documentary evidence must not be retouched or otherwise altered;
viii. sheets may not be folded, stapled, glued or in any other way attached to each other.

Even a staple or paper clip being used to fasten papers can lead to an application being summarily rejected.

If you wish to apply for .eu domain name registration during the Phase 1 or Phase 2 sunrise period, please advise us immediately, as all applications will be dealt with on a first come first served basis.

Our inclusive fees for filing and prosecuting .eu domain name applications during the two sunrise periods are £200 for a Phase 1 sunrise application, or £250 for a phase 2 sunrise application for which the official fees are higher. This does not include VAT or dealing with any special requirements such as the need to submit documentary evidence in affidavit form for unregistered trade marks or translations of non-English language documents. Registration is for a term of one year.

Please note that, because of the first come first served rule, there is no guarantee that applications will be accepted, and rejected applications will only qualify for a partial refund.

Registration is in the form of e.g. bloggo.eu or 2u.eu; no intermediate “co.”, “org.” or “net.” is needed.

[littlehouse]

I fail to see the value of the new EU domain suffix, other than to domain registrars yet again milking the business community for more fees to protect existing trademark rights.

It is about time it was the law that trademark holders were entitled to their own domains under *any* new suffix.

We have had to purchase numerous variations already of our trading name to prevent infringement and have had the misfortune of having to undertake a WIPO arbitration in order to secure the recovery of a domain which directly infringed our trading rights from a competitor - the entire cost of which was borne by ourselves (around £3,000) with no recourse to the offender.

So here we are again, obliged to consider excessive registration fees (as trademark holders) to prevent someone registering an EU domain (which we don't need). The problem being, it's not just 1 domain name we would need, but possibly 30 variations to be certain - 30 x £150-£200...!

If we do not register our domain in the sunrise period, incurring what I think are rip-off pre-registration charges (frankly) what recourse do we have if someone comes along later and registers our name directly infringing our trademark?

I don't see why we should have to go through expensive arbitration or even legal action - the registrars cause this problem, there should be a much easier and simpler method of claiming trademark rights directly with the registrars who permit unregistered traders registering names they have no rights to.

[VeryMark]

The time and cost involved in a WIPO arbitration is significant, as is the cost of intellectual property litigation generally since actions have to be brought in the High Court or the specialist Patents County Court which is also expensive.

However, many cases are in fact settled by negotiation between the parties without it being necessary to pursue formal proceedings to their conclusion. The chances of succeeding in this way are enhanced by:

a) having an obviously strong case, so that the other party can see immediately that you are likely to succeed, and

b) having a determination to press the matter if needs be formally through the courts, so that the other party can also see that delay and prevarication on their part is ultimately likely to cost them more than it gains.

So, if you have a good case, you can often get redress without spending too much money with the right approach - if you appear to the other party to be hesitant and weak, it will undermine your case, whereas acting in a strong and determined manner can make the other party keener to seek a settlement.

Too many people let their nervousness about litigation translate into a weak approach - human nature, but something that can make it much more difficult to obtain a positive result.

[littlehouse]

Good advice as far as negotiating goes I agree.

In more minor infringements (which we get frequently) we always approach the services first and request that they cease with an offer to take no further action over their infringement if they agree to refrain from such activity in the future and in one case hand over the domain in use.

In the case which we were obliged to take to WIPO, the offending party basically knew exactly what they were up to, that they were entirely in the wrong but effectively stuck two fingers up at us, so there was no opportunity to settle. Even the WIPO panellist was astonished at their attitude and commented on the poor quality and veracity of the claims they made (in their legal statements to WIPO) to try and hold on to the domain.

Because of the vagaries of the courts, we were advised that High Court action could prove much more costly than arbitration with no guarantee that costs would be awarded in our favour if we won, even though in that particular case, it would have been very satisfying to have landed the particular offender with a very large court settlement and costs.

There does seem to be a problem over proving the value of losses (damages) incurred in such cases also - how do you know how much business has been lost to a competitor stealing your trading rights?

My point remains that there ought to be better and cheaper means of redress for blatant trademark infringements involving internet domain names.

[VeryMark]

I agree entirely, I have already said to the Patent Office as part of their ongoing review that it would be helpful to SME's in particular if there was a simplified form of legal action available in blatant open and shut cases which would allow you to get summary judgement to obtain an injunction through, say, the county courts.

[fastfences]

So here we are again, obliged to consider excessive registration fees (as trademark holders) to prevent someone registering an EU domain (which we don't need). The problem being, it's not just 1 domain name we would need, but possibly 30 variations to be certain - 30 x £150-£200...!


I'm not up with this because I'm staying fairly local, but are you saying that a .eu domain costs £150? For 12 mths or 24?
cheers, Nigel

[VeryMark]

No, Nigel, it's only if you want to get ahead of the crowd under the sunrise procedure for owners of pre-existing trade marks and other rights that it costs you more to take advantage of that.

[fastfences]

Ok, ta for that, Philip.
Cheers, Nigel