In June 2015, corporate practitioners from a number of countries representing a range of industries took part in two In-House Idea Exchange teleconferences on “gTLDs: One Year Later,” presented by INTA’s In-House Practitioners Committee. The Idea Exchanges were moderated by Kat McGowan (LinkedIn Corporation, USA) and Todd Williams and Claire Kimball (both of Turner Broadcasting System, Inc., USA).
It has been more than one year since ICANN launched the new generic top level domain (gTLD) program. The Idea Exchanges teleconferences brought together in-house trademark practitioners to discuss how their companies have responded to the challenges created by the new gTLDs.
Topics from the two Idea Exchanges included the following:
- Business considerations in the decision to apply for .brand TLDs;
- How registration strategies have changed in response to gTLDs;
- Enforcement strategies and effectiveness of rights protection mechanisms (RPMs); and
- The future of new gTLDs, including future application rounds.
Participants discussed their companies’ rationales for applying or not applying for a .brand TLD. Some of the companies that applied reasoned that the .brand TLD could be used to provide reassurance to customers that they are at the official site and to protect against phishing. Other companies that applied did not have definite plans for the use of the .brand TLDs, but viewed the .brand TLDs as an opportunity with potential benefit that they did not want to miss. The companies that did not apply for .brand TLDs cited as the main reasons for their decision: the high cost of the application and lack of relevancy of domain names due to greater use of search engines and apps.
With respect to registering domains using new gTLDs, most participants agreed that there were only a few new gTLD extensions that they saw as being relevant to their businesses, and it was questionable whether any of them was very important to own in light of the decreasing importance of domain names to Internet users. Participants also discussed their strategies for defensive domain registrations. Many participants stated that their companies had to scale back their strategies regarding defensive domain name registration in light of the tremendous increased cost of defensive registration across so many domains. For example, one company that used to employ an extensive defensive strategy, which included registering spelling variants and typographical errors, is now only registering the exact trademark. Some companies reported limiting their defensive registrations to new gTLDs that had some relationship to their products or services. Others reported registering domains defensively in all of the new gTLDs. Many companies are using the Domain Protected Marks List (DPML) offered by Donuts Inc., to prevent others from registering domains corresponding to key brands across numerous gTLD registries. A number of participants complained that signing up for the DPML block for a particular mark seemed to increase the likelihood that the domain would be treated as “premium” in individual registries and subject to higher registration fees. In addition, participants complained that in a few cases where they wanted to register a domain covered by the DPML block, they had to pay a fee to remove the block in addition to the high domain name registration fees.
A hot topic in the discussion of defensive registrations was the .sucks TLD. Some companies applied to register their key brands in the .sucks registry, citing concerns that upper management would not be happy if a criticism site was launched under the .sucks TLD for their brand. Other companies did not apply, reasoning that they viewed the cost of registration as unreasonably high, and it is easy to register other variants of the domain. Several participants mentioned a recent National Public Radio (NPR) interview with INTA President J. Scott Evans, speaking in his capacity as Associate General Counsel at Adobe Systems, in which he called the .sucks domain an “extortion scheme” and suggested that “the best way not to get included is not to suck.”
Participants discussed whether they typically used sunrise periods for domain registrations, or whether they just went through the regular registration process because sunrise registrations involve increased costs. Most participants used sunrise registrations for registrations that they viewed as most important, and some participants stated that they registered domains through the regular process where the registration was a less important one.
Participants discussed the Uniform Rapid Suspension System (URS) as compared to the Uniform Domain Name Dispute Resolution Policy (UDRP). None of the participants on either call had used the URS, and the consensus was that the URS was not a very effective RPM.
Future of New gTLDs
Participants were interested in whether there would be another opportunity to apply for new gTLDs. The call moderators said that ICANN has been talking about opening up another round of applications in the future, but as of yet no dates have been set. The moderators urged brand owners to get involved in ICANN’s Business Constituency, which has fewer than 50 members, so that they can provide input and influence ICANN’s policies. INTA corporate members who are interested in participating in ICANN’s Business Constituency can contact Lori Schulman (firstname.lastname@example.org), INTA’s Senior Director, Internet Policy.
The Idea Exchange confirmed that in-house practitioners share many of the same challenges regarding the new gTLDs. There appeared to be a shared view that the new gTLDs were resulting in increased effort and expense on behalf of brand owners. The lively discourse gave participants the opportunity to gain insight into how other companies are addressing these issues. In-house practitioners are encouraged to participate in future Idea Exchange events on other topics of interest.
To propose a topic for a future Idea Exchange, please contact Ryan O’Donnell (email@example.com), INTA’s Manager, Member Operations.
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.
© 2015 International Trademark Association