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January 15, 2017 Vol. 72 No. 1 Back to Bulletin Main Page

INTA Impact Study on Costs of New gTLDs: We Need You!

INTA corporate members (regular, small- and medium-sized enterprises (SMEs), nonprofits and academic institutions) will soon have the opportunity to provide input on the impact of the new gTLD program on trademark enforcement. The survey will ask brand owners about the costs of enforcing trademark rights under ICANN’s new gTLD program, and will be conducted by Nielsen Consumer Insights, an external services provider, at the request of INTA’s Impact Studies and Internet Committees.

INTA strongly encourages all corporate members to participate in this survey. Your responses will help ensure that appropriate and cost-effective rights protection mechanisms are in place at ICANN before the second round of new gTLDs begins. Responses will also impact INTA’s strategic direction in advocating for specific trademark protection policies over the next several years.

INTA corporate members will receive an invitation to access the worksheet and online survey between January 17 and February 3.

Review of the New gTLD Program by ICANN

As part of its launch of the new gTLD program, the Internet Corporation for Assigned Names and Numbers (ICANN) has committed to conducting a regular review of the new gTLD program, including its impact on competition, consumer choice, and consumer trust (CCT). In particular, ICANN has committed to addressing issues of competition, consumer protection, security, stability, malicious abuse, and rights protection for the new gTLDs. As a result, ICANN created the CCT Review Team to monitor and assess the impact of the new gTLD program on these issues, as well as the effectiveness of the new gTLD application and evaluation process and the safeguards put in place to mitigate abuse arising from the new gTLD program.

To assist the CCT Review Team, ICANN’s Implementation Advisory Group developed 66 metrics to use in assessing the effects of the new gTLDs, such as information about domain name registries, registrars, and rights protection mechanisms (RPMs), and is currently collecting and publishing data related to these metrics. To date, ICANN has commissioned studies on consumer awareness, perceived consumer choice in the domain name purchasing process, trust in the domain name system, as well as pricing trends and other competition indicators in the domain name marketplace.

Based on the CCT Review Team’s assessment, ICANN’s Subsequent Procedures working group may issue recommendations to the ICANN Board to address these issues in the present and future new gTLD rounds.
As part of its review, the CCT Review Team also wants to review the impact that the introduction of the new gTLDs has had on brand owners, specifically the cost and effort required to protect and police trademarks. To date, no empirical data has been developed on the costs that brand owners have had to incur. In order to provide this information, INTA has been invited to provide the feedback of its membership.

New gTLDs Survey

To further the examination by the CCT Review Team and shape the conversation within the ICANN community with regards to brand protection, INTA will be soliciting responses from its members in the form of a survey from January 17, 2017 to February 3, 2017. The survey itself will be carried out by Nielsen Consumer Insights, an external services provider, that will aggregate all data to protect the confidentiality of individual responses. Neither INTA nor ICANN will have access to individual survey forms.

While completing the survey will only require approximately 30 minutes, the survey will require some preparatory work on the part of the corporate members with regard to the costs of trademark enforcement relative to domain registrations. Survey respondents will be provided with a worksheet to assist them with this process. Information to be collected in preparation for responding to the survey includes:
  • Number of domains registered under the “legacy” (i.e., .com, .net, etc.) and “new” (i.e., .bank, .sucks, etc.) gTLDs in the past 24 months; 
  • Reasoning behind registering such domains and possible alternatives;
  • Number of trademark claims notices received and estimated cost associated with these claims notices (both in-house and outside counsel); 
  • Estimated cost spent on general Internet monitoring of trademarks to identify potentially abusive or infringing domain names; 
  • Estimated cost spent on any of the following: cease and desist letters; UDRP proceedings; civil actions after adverse UDRP rulings; URS proceedings; ACPA lawsuits; and other trademark lawsuits resulting from a new gTLD;
  • Estimated cost spent on pursuing action against registrars and registries; and
  • Company policy with regards to premium pricing for domain names.
In order to provide the CCT Review Team with enough information to conduct and support its review, it is essential that INTA obtain accurate and comprehensive empirical data. Therefore, it is essential that INTA corporate members participate in the study. Law firms are also encouraged to advise their clients, who are members of INTA, to participate and—as far as possible—research and aggregate the information necessary to respond to the survey.

Not only will this data be helpful in INTA's fight to ensure appropriate and cost-effective rights protection mechanisms are in place at ICANN before the second round of new gTLDs begins, but it is also critical to INTA's primary strategic direction to advocate for the vigorous enforcement of strong policies that provide protection for trademarks. In addition, such data will allow INTA to identify trends, conduct benchmarking, and reveal best practices for the benefit of its members.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2017 International Trademark Association