Title: From Asia For Asia: Global Recognition, Regional Significance.
1From Asia / For AsiaGlobal Recognition,
Regional Significance.
2Panelists
- Edmon Chung Leona Chen DotAsia
- Keith W. Medansky - DLA Piper US LLP
- Dee Ann Weldon-Wilson - Exxon Mobil Corporation
- Gretchen M. Olive - Corporation Service Company
(CSC)
3Webcast Agenda
- Current Cyberscape Registration Trends
- What is the DotAsia Organization
- Value/purpose of .Asia
- .ASIA Launch Phases and Timetables
- .ASIA Sunrise eligibility requirements for Owners
and Licensees - Acceptable Trademarks
- Verification and Auction Processes During the
Sunrise Phases - How .ASIA launch compares to .EU launch
- Rules for the Dispute Resolution Process
- Best Practices and Strategies for Trademark
Owners
42007 Asia Takes the Lead
- Asian Development Bank Adjusts Asia Growth
Forecast Upward - Forbes.com - 09.17.07
- Asian countries advance in the 2007 e-readiness
rankings, as the goalposts of digital leadership
shift - Economist.com - 08.22.07
- 2007 will be remembered as the year the balance
tipped. For the first time, Asia takes the
global lead in some key aspects of the digital
marketing mix - Asia Digital Marketing Association 2007
- Sunrises in .Asia - 2007
5DotAsia Organisation
- Membership-based, Not-for-profit Organisation
incorporated in Hong Kong - Membership
- Sponsor Members ccTLDs in the region
- Expertise in TLD operations and management
- Experience in balancing the interests of public
authorities and the public at large - Co-Sponsor Members Internet / IT / Community
groups in the region - Knowledge experience in operation of public
resources in the best interests of the community
at large
6DotAsia Organisation
7Vision and Mission
- Vision
- Leverage the successful and cooperative platform
of the Pan-Asia and Asia Pacific Internet
community to further this collaborative approach
to other areas of the growing economies. - Mission
- Sponsor, establish and operate an Internet
namespace with global recognition and regional
significance dedicated to the needs of the
Pan-Asia and Asia Pacific Internet community - Reinvest surpluses in socio-technological
advancement initiatives relevant to the Pan-Asia
and Asia Pacific Internet community - Operate a viable not-for-profit initiative that
is a technically advanced, world-class TLD
registry for the Pan-Asia and Asia Pacific
community
8The .ASIA Concept
- All TLDs except ccTLDs are perceived as
Western-based - Yet, over 60 of the worlds population and 90
languages reside in Asia - .ASIA fulfills a latent market need
- Internet penetration/usage growing exponentially
in Asia - Internet is critical to communitys growth,
access and integration - Thriving Asian community bound together by a
dynamic environment undergoing dramatic,
accelerating change - e.g. APNIC, APNG, APRICOT
- Its time for the Asia region to establish its
own identity on the Internet
9Asia online
- Asia already by far largest online population
- 399 Million vs. 315M in Europe / 253M in US
- 258.2 Growth of Internet users in Asia from 2000
to2007 - Asia Internet Traffic
- Statistics from Alexa.com
- Traffic to Global Top 10 websites
- Asia 25.52 / US 17.70 / Europe 12.65
- Overture reports 309,369 searches in Feb 2007
alone for Asia or Asian - Compared with 69,584 for Europe and 14,706 for
EU - Technorati reports 100,000 blogs using Asia tag
for posts - New research from Windows Live Spaces estimates
that nearly 50 of Asias Internet users have
their own blog
10Value of a Domain
- More than Brand Protection, more than just an
Internet address - Channels and passageways to your website
- Driving traffic to your website
- Part of your corporate identity and brand
- Core nucleus of digital marketing
- Jupiter Research Shift of marketing dollars from
traditional to online advertising - US19.9 billion in 2007 gt US35.4 billion in
2012 Valuable cyber real estate - One website, many domain names
- Long tail and a core tool for search optimization
11Snapshot of Domain Industry
- 138 million domain name registrations worldwide
- All time high of 14.5 million new domains
registered in the second quarter of 2007 - .CN (China) the third largest ccTLD with over 6.3
million domain registrations ending July 2007 - .EU Top Level Domain for Europe launched in April
2006 has already become eighth most popular
worldwide TLD with over 80 renewal rate
12From Asia / For Asia
- Relevant to scope
- Internet users actively look for info on Asia
- Where you are / Who you are speaking to
- From Asia (affiliation / scope)
- Local companies expanding to the region
- Regional organisations and initiatives
- Regional events and conventions
- For Asia (audience)
- Regional headquarters of Multinational Companies
- Regional media and promotion campaigns
- Asians around the world (Asia Societies,
Associations and Groups in US, Europe, etc.) - Organisation From Asia / For Asia
13Value of .Asia Natural Word
- Used in everyday language, actively searched for
- Already part of names, brands and categories
- Company Names Googling Asia Ltd. returned more
than 1.5 Million records 289 company names
started with Asia in the Monster.com database - Trademarks 733 records found containing Asia
in USPTO TM database (vs. 669 with Europe) - Conferences Googling Conference Asia returned
more than 1.3 Million results - Magazines 966 entries found on Amazon.com for
Asia magazines (vs. 435 for Europe) - One of the most affordable way to establish
presence in the largest and fastest growing
market today.
14Value of .Asia Utilization
- Headquarters / Special focus for Asia
- Versatile, neutral and sense of commitment
- 4000 regional headquarters in Hong Kong alone
(April 2006) - Promotion at regional events
- Asian Games, ITU Asia, Expo Asia, Conference Asia
- Complementing sponsorships and advertisements
- Region wide initiatives
- Development funds, etc.
- Participation in Asia Pacific organizations
- Local companies expanding to region
15Online Presence that Speaks for Itself
- Scope of business Coherent Branding, e.g.
- CNN Asia
- http//edition.cnn.com/ASIA/ ? CNN.Asia
- Hyundai Asia
- http//www.hyundai-asia.com ? Hyundai.Asia
- Harry Potter Asia promotions
- http//www.harrypotter-asia.com ?
HarryPotter.Asia - Time Magazine
- http//www.time.com/time/magazine/asia/ ?
Time.Asia - Yahoo! Asia
- http//asia.yahoo.com/ ? Yahoo.Asia
16Building the .Asia Value
- .COM / .EU / .Asia
- Strong Commitment from DotAsia
- Encourage usage of .Asia domains
- Promote awareness
- Commitment to community (not-for-profit)
- Digital Inclusion initiatives
- Education and bringing schools online
- Regional Research Projects
- Pioneers Domains Program
- Encourage positive active usage of .Asia
- Drive awareness, adoption and traffic of the
.Asia - Result posted online www.think.asia /
www.icannwiki.org
17Launch Process
- Sunrise process designed to introduce the .ASIA
registry in an orderly, stable and logical manner
that takes into consideration the established
prior rights of others - Policy Development
- Important consideration throughout application
and clarification during ICANN process - .Asia Sunrise Policy Developed through extensive
and public process with industry input - Protection of Rights of Others
- Comprehensive Sunrise process
- Proactive partnerships to tackle phishing and
abusive behaviours - Engagement with governments in Asia
18 19Protection of Rights of Others
- Policy Development
- Important consideration throughout application
and clarification during ICANN process - .Asia Sunrise Policy Developed through extensive
and public process with industry input - Strong commitment
- Comprehensive Sunrise process
- Industry standard Dispute Resolution policy UDRP
- Proactive partnerships to tackle phishing and
abusive behaviours - Engagement with governments in Asia
20.Asia Sunrise Policies
- Sunrise 1 Governmental Reserved Names
- Government related names in Asia
- Sunrise 2 Registered Marks
- Registered Trademarks / Service Marks
- Sunrise 3 Registered Entity Names
- Company names
- All applications must meet Charter Eligibility
Requirement
21Charter Eligibility Requirement
- Akin to Local Presence requirement
- One (only 1 required) of the Domain Contacts
associated with the Domain Name must be a legal
entity in the DotAsia Community - Legal Entity Natural Persons, Corporations or
Companies, Cooperatives, Partnerships or
Collectives, Government Bodies, etc. - Asia address is not required (i.e. an HK citizen
living in USA is eligible to be a CED Contact) - Domain Contacts
- Registrant, Admin, Tech, Billing
- DotAsia Community
- ICANN Asia / Australia / Pacific Region
- 73 economies / countries (ISO 3166 code)
22.Asia Sunrise Process
- Sunrise 1 (SR1) Governmental Reserved Names
- Must be activated (registered) via ICANN
registrar - Sunrise 2 (SR2) Registered Marks
- Sunrise 2a (SR2a) Early Bird Sunrise
- TM application cut-off date March 16, 2004
- Demonstrable usage of Mark (doc. proof req. only
upon request) - Sunrise 2b (SR2b) General Registered Marks
- TM application cut-off date December 6, 2006
- Sunrise 2c (SR2c) Extended Protection
- TM Class Description words
- Sunrise 3 (SR3) Registered Entity Names
- Doc. proof req. (e.g. certificate of
incorporation) - Docs submitted are posted publicly
23.Asia Sunrise Applications
- Complete online application process
- Documents are required only upon request
- Documents can be uploaded electronically
- Hard copies only required upon exceptions
- Sunrise Applications
- Domain Name Applied For
- Contact Information
- IPR Bibliographical Data
- Charter Eligibility Declaration (CED)
24Sunrise 1 Governmental Names
- Pre-Sunrise
- Proactive outreach to government in Asia
- March 21 August 31, 2007
- Framework
- Country, city, province and place names
- 3 Tiers
- Tier 1 Country Names and Variants
- Tier 2 Major Cities, Provinces, Gov Dept Names,
etc. - Tier 3 Smaller Cities, Other Gov Names Tourism,
etc. - Activation of Governmental Reserved Names
- Must be procured via ICANN Accredited Registrar
25Sunrise 2 Registered Marks
- Registered Trademarks / Service Marks
- Trademark offices (worldwide)
- WIPO ST.3 Recommended Standard on Two-Letter
Codes for the Representation of States, Other
Entities and Intergovernmental Organizations
http//www.wipo.int/export/sites/www/scit/en/stand
ards/pdf/03-03-01.pdf - Refined into 3 Sub-Phases
- Sunrise 2a (SR2a) Early Bird Sunrise
- Sunrise 2b (SR2b) General Marks Sunrise
- Sunrise 2c (SR2c) Extended Protection
26Sunrise 2a (SR2a) Early Bird
- Applied for on or before March 16, 2004 (SR2a
Cut-Off Date) - Date DotAsia Application Submitted to ICANN
- Registered and in full force and effect
- Demonstrable Usage (in the class if applicable)
registered - Bibliographical Data corresponding to the
registration records at the trademark office - Registrant Contact is owner, co-owner or assignee
of Registered Mark
27Demonstrable Usage (SR2a)
- Registered and genuinely used in good faith and
not merely a means to register a domain name or
otherwise unutilized - Demonstration
- Advertising, promoting, distributing, offering or
selling of goods or services of the Applicant
bearing Mark in print or otherwise in display
(e.g. signage or engravings) or, - Relevant sectors of the public led to associate
the Mark with goods or services of the Applicant - Usage taken place in at least one of the
localities mark registered. - Template Declaration Form to be provided
28Sunrise 2b (SR2b) General
- Applied for on or before December 6, 2006 (SR2b
Cut-Off Date) - Date DotAsia signed agreement with ICANN
- Registered and in full force and effect
- Bibliographical Data corresponding to the
registration records at the trademark office - Registrant Contact is owner, co-owner or assignee
of Registered Mark - Documentary evidence required only upon request
- Same process as SR2a (at least 10 days provided)
- Similar documents required
29Sunrise 2c (SR2c) Extended Protection
- Registered Mark Acceptable Extension
- Acceptable Extension
- Words in Class Title, Sub-title or Description
that describes the Class - Class for which TM was registered in
- Nice Classification System http//www.wipo.int/cla
ssifications/nivilo/nice/index.htm - Hyphenated or combined (space removed)
- Example
- Trademark XYZ registered in Class 1
Chemicals - SR2a/b XYZ.Asia
- SR2c XYZChemicals.Asia or XYZ-Chemicals.Asia
30Potential SR2c Applications
- Trademark XYZ in TM Class 16 Paper
- Brand owner can protect their name with names
relevant with their lines of business - XYZpaper.Asia / XYZcardboard.Asia /
XYZstationery.Asia / XYZbooks.Asia /
XYZcalendars.Asia / XYZcanvas.Asia /
XYZbookbinding.Asia / XYZphotographs.Asia /
XYZadhesives.Asia / XYZpaintbrushes.Asia /
XYZtypewriters.Asia / XYZpackaging.Asia
31Sunrise 3 Registered Entity Names
- SR3 Applications are Unverified
- Applications will be checked for consistency
between - Registrant Contact / Registered Entity Name /
Domain Name Applied For - Documentary Requirement (MUST be submitted,
posted publicly) - Registration of Entity must be in DotAsia
Community - SR3 Cut-Off must be registered on or before Dec
6, 2006 - Acceptable Match / Amendment / Reconsideration
Same as SR2
32Other General Sunrise Policies
- Acceptable Match
- Assignee / Transferee / Licensee
- Documentary Evidence
- Amendment
- Reconsideration
- Multiple Applications to Same Domain
33Acceptable Match for SR2 and SR3
- Exceptions for spaces and special characters
- May be omitted or replaced by hyphen
- Exceptions for accented characters
- May be replaced by base character (i.e. without
accent) - Exceptions for type identifiers
- E.g. , TM, SM, Ltd., PTE, Inc., May be omitted
- Exceptions for the term Asia
- May be omitted
- ABC Asia gt abc.asia / Asian ABC gt
abc.asia - For SR2a only available for Asia at the end of
TM - Transliterations not accepted
- ö may not be replaced by oe
- ?? may not be replaced by zhongwen
34Assignee, Licensee Transferee
- Discrepancy between Registrant Contact and Owner
of Mark at TM Office - Use Assignee Under 6. Nature of Entitlement
- Template forms to be provided by Registry
- Assignee
- Licensee or Sub-Licensee
- Transferee
35Documentary Evidence
- Required only upon request
- At least 10 calendar days given for response
(directed by Verification Agent) - Types of documents requested
- Electronic copy of document issued by TM office,
or extract from official database - Assignee document
- Demonstrable Usage
- Electronic Format
- PDF or TIFF, file size lt400KB
- Suggested resolution 150x150 dpi or higher
36Amendment / Reconsideration
- Standard Amendment Process (via Email)
- Directed by Verification Agent
- For typographical mistakes
- Response period no less than 10 calendar days
- Reconsideration Process (via Email and web)
- May be requested within 7 days of notification of
failure of verification - Additional information and amendments may be
provided (including adjustment for Domain Name
Applied For) - Applicant not to be biased against other avenues
of recourse, e.g. UDRP
37Multiple Applications for a Domain
- Sunrise 1
- First-Come-First-Served
- Sunrise 2, Sunrise 3 (and Landrush)
- All applications during each particular sunrise
period (SR2a / SR2b / SR2c / SR3) are considered
to be received at the same time - If domain has only one successfully verified
application, it is allocated accordingly - If domain has more than one successfully verified
application, auction is held between the
successful applicants
38Auction Arrangement and Concept
- General Arrangement
- Reasonably prior to auction being held (Quiet
Period), successful applicants will be provided
information of other bidders (Quiet period to be
at least 10 days) - Applicant may initiate dispute at competent court
or tribunal - English style auction
- Concept
- Fair allocation (instead of lottery-like
situation at initial rushes) - Work with one trusted Registrar (instead of
having to go to multiple registrars to try to get
to the head of the queue) - More economical (most marks are unique and there
is no need to pay multiple registrar to increase
chances) - Encourage usage (highest bidder more likely to
use domain with greatest marginal utility for
domain)
39Key Providers
- Registry Technology Provider
- Registry systems and DNS Resolution
- Afilias Ltd.
- Verification Agent
- Verifying claims for applications
- Outreach to brand and mark owners
- Deloitte
- Principal Worldwide Verification Agent
- AGIP (Abu-Ghazaleh Intellectual Property)
- Regions in Middle East and South Asia
- Auction Partner
- Online auction platform
- Pool.com (http//dotasia.pool.com)
40.Asia Sunrise Schedule
- October 9, 2007
- Sunrise 1 Governmental Reserved Names
- Sunrise 2 Registered Marks
- Sunrise 2a (Oct 9-30) Early Bird Sunrise
- November 13, 2007 January 15, 2008
- Sunrise 2 Registered Marks
- Sunrise 2b General Registered Marks
- Sunrise 2c Extended Protection
- Sunrise 3 Registered Entity Names
41Utilization Value of .Asia
- Value of .Asia domains for European Companies
- Gateway and Portal to Asia Market
- Commitment to Asia Community
- Channel to the rest of Asia
- Relevance, ease of navigation and high relevance
in Internet Search - Your commitment for other companies investing
into Asia - Protection ? Utilization
42How is the launch of .ASIA different from .EU?
- Nexus Applicant Must Have with the Region Differs
- .EU Applicant itself must have some sort of
nexus with the EU - .ASIA Applicant must identify an associated
contact that is a legal entity in Asia - Priority Determined Differently
- .EU first-come first-served basis
- .ASIA if a tie, auctions
43How is the launch of .ASIA different from .EU?
- Sunrise Periods are Different
- ASIA public/governmental entities have their own
Sunrise Period - .ASIA Sunrise 2
- Registered 3/16/04
- Registered 12/06/06
- combine a registered mark (12/06/06) with a word
of its class, based on the NICE classification - .ASIA owners of common law TMs not eligible for
sunrise
44How is the launch of .ASIA different from .EU?
- Submission of Documentary Evidence is Different
- .EU documentary evidence mandatory
- .ASIA Sunrise 2 only needed if requested by
verification agent - .ASIA Sunrise 3 (Companies, associations)
mandatory - Requirement for local registration
- .EU rush to register
- .ASIA 3/16/04 and 12/06/06 deadlines
45Dispute Resolution
- If Uniform Domain Name Dispute Resolution Policy
(UDRP) is adopted, then there will be three
providers - World Intellectual Property Organization (WIPO)
- National Arbitration Forum (NAF)
- Asian Domain Name Dispute Resolution Centre
(ADNDRC)offices in Beijing, Hong Kong and
Seoul. - If Charter Eligibility Dispute Resolution Policy
(CEDRP) is adopted, then WIPO will be the
provider - DotAsia will be exploring the possibility of
applying a local dispute resolution policy when
both the complainant and the respondent come from
the same economy. It is unclear at this time who
the remaining providers would be.
46Dispute Resolution Under UDRP
- Complainant must show (1) that the domain at
issue is confusingly similar to a trademark in
which the Complainant has rights, (2) the
Respondent has no legitimate interest in the
domain, and (3) the Respondent registered the
domain name in bad faith. - Respondent is required to submit to
administrative proceeding. - Provider appoints a Panel to decide the dispute.
- Remedy is limited to the cancellation or
transfer. - Provider notifies ICANN of any decision made by
the Panel.
47Dispute Resolution ProceduresUnder CEDRP
- Third party (Complainant) who believes that the
domain name at issue does not meet the Charter
Eligibility Requirements (establishing
appropriate nexus to the region) submits a
complaint to the Provider (which is WIPO). - Owner of the domain name (Respondent) is required
to submit to administrative proceeding. - ICANN has no involvement with the proceeding.
- Provider appoints a Panel to decide the dispute.
- Remedy is limited to the cancellation of the
domain name. - Provider notifies ICANN of any decision made by
the Panel.
48 49Selecting Marks/Brands/Namesfor Registration
-
- General Criteria
- Use
- Defensive
- Mark generic or descriptor
- Possible searches for that domain name
- Consider SR2c applications
50Selecting Marks/Brands/Namesfor Registration
- Major marks
- Specific product and service marks
- Registered slogans
- Company, society, association, or other
organizational name
51Name Variation Strategy
- Recent Infringement Research
- CSC analyzed 100k domain registrations belonging
to 47 randomly selected brands across 23 industry
sectors - Findings
- Exact Match Other Term made up the largest
proportion on registered 3rd party registrations - Typo registration was not prominent
- For .Asia
- Brand generic/descriptive terms (may qualify as
early as SR2c) - Misspellings may not be best use of budget
52Prior to Filing in SR2a
- Consider
- Reserved Name Pre-Sunrise/SR1 Phase or under the
Pioneer Program - Mark applied for on/before March 16, 2004
- Exact word/phrase registered, except
- - spaces, punctuation, special characters
- - hyphens or replacement word
- - omit words relating to "Asia
- - marks containing 2 characters
53Prior to Filing in SR2a
- Consider
- Mark registered in state/entity set out in WIPO
Standard ST.3 code - Demonstrable Usage
- Focus on marks that may end up in an auction
- Entity to hold domain name registration
- Meet Charter Eligibility Requirements
- What should also be applied for in SR2c
54Pre-verification vs. Reconsideration
- Pre-verification service being offered by
Deloitte and AGIP (Middle East Agent) - Pre-verification
- Peace of mind/relieves admin error or misread of
rules fears - Avoid future request for documentary evidence
- List of eligible SR2c names to consider
- Application fast-tracked after submission to
registry - Verification may be re-usable in future TLD
launches - Optional service
- Reconsideration
- Avoids .EU situation regarding correction of
application errors - Timelines are short
- May need to prepare additional documentation
- Fees involved
- Be prepared for likely need for
Assignee/Licensee/Co-owner documentation (i.e.,
affidavit)
55Prior to Filing in SR2b
- Consider
- May not be available if a successfully verified
application was filed in SR2a - Considerations for SR2a
- No requirement for Demonstrable Usage
56Prior to Filing in SR2c
- Consider
- Mark with Acceptable Extension
- Word from class title, subtitle or description -
significant enough word to id the class - Brands with common generics
- Singular / plurals
- Hyphens / spaces
57Applications in SR3
- Names of companies, societies, associations, and
other organizations - Registered company names only
- Exact word or phrase
- Limited to the DotAsia community
- Documentary evidence will be required and public
58Landrush
- Generic and descriptive terms
- Names of founders, directors, owners
- House brands with product names
- Derogatory or disparaging terms
59Single vs. Multiple Registrar Strategy
- Sunrise and Landrush phases not First Come, First
Served - Multiple applications for name handled via
auction - Beware of artificially pushing a name into the
auction process
60Required data for Sunrise 2 3
- Required data for eligible Sunrise 2 and 3
includes, but is not limited to - Name - Exact word or phrase of TM or entity
name - Number - Registration number (TM or
incorporation) - Locality - Country where prior right is held
- Date applied - Date of application for TM or
entity - Date registered - Date of registration for TM
or entity - Class - Class of registered TM, or type of
registered entity - Type - Type of registered TM or entity
61Required Documents for Sunrise 2 3
62Auction Preparation Strategy
- Auction will happen in Sunrise and Landrush
- SR2b, SR2c and SR3 applications treated as if
received at the same time - Closed, online auction
- Investigate the claims of other parties
- To participate or not?
- Better to participate in auction or try to
purchase from winner later?
63Auction Preparation Strategy(continued)
- Internal clearances/authorizations/valuations
- Internal Accounts Payable processes
- Determine maximum bid prior to auction
- Have backup domain name (see SR2a)
- Which internal entity should bid to register
- 24 hour / 7 days a week bidding process
- Authorizing a third party to bid in your name
64Auction Preparation Strategy(continued)
- Research your competition
- Timing between bids
- Bidding strategy
- Consequences of losing auction
- public perception/possible PR
65.ASIA Contacts
- CED Contact
- Local Presence
- If CED not Registrant, then Registrant CED
Registered Name Holder - Has responsibility in responding to Disputes
- OPN Contact
- Need to select or will default to registrar
- Whois Contact Selections
- Registrant operating contact for domain
66Thank you for Participating
- Webcast will be available for download or as a
podcast within 24-48 hours - Further questions to panelists should be sent to
DotAsia_at_inta.org