Features

Making Sense of Trademarks on the Right Side of the Dot

Published: September 9, 2020

Frank Wood

Nick Wood Com Laude London, UK Brands for a Better Society Committee and the Programming Advisory Council

Stylized global map with blue digital glowing connectionsWhen the Internet Corporation for Assigned Names and Numbers (ICANN) launched its new generic top-level domain (gTLD) program in 2008, it sought to introduce competition and innovation into the domain name system. On Reveal Day, June 13, 2012, when it was announced who had applied, many were astonished to see that brand owners had submitted 637 out of 1,930 applications—nearly one third.

With the second round of new gTLDs expected to open in 2022, it is worth considering the benefits and pitfalls of applying for a dot Brand.

Brands typically weigh three key benefits when considering a dot Brand gTLD and the US $185,000 application fee:

  1. To protect intellectual property: Someone somewhere else may have a legitimate, competing right to your mark and lock you out from a unique string at the top level of the Internet. Teva Pharmaceuticals applied for dot Teva because the sandal company had beaten it to Teva.com a decade earlier, for example.
  2. To provide control: Third-party registries can be bought or sold, and country code registries are the subject of government oversight. Owning a dot Brand and controlling it through a dot Brand registry gives the brand owner the opportunity to stand alone to make its own policies as to who can come into the registry. This level of control enhances predictability and business continuity. KPMG, for one, asserted centralized control over its international network by migrating entirely to .kpmg.
  3. To enhance customer trust and security: Brands can develop one globally applicable address exactly matching the masterbrand as a trusted space. Some 8 million Internet banking customers will access their accounts this week through mabanque.bnpparibas.

Internet users appear to welcome dot Brands as destinations where they can find authentic information, goods, and services. After the national French rail provider, SNCF, rebranded its online ticketing portal—which attracts 14 million visits a month—to oui.sncf, it reportedly saw an increase of 12 percent in visitors to the site after just nine months and a 20 percent increase in awareness and recall of the brand.

With their existing websites functioning perfectly well under .com and country-code extensions, dot Brand applicants who applied to protect their trademarks or to enhance customer trust found themselves looking for practical, everyday uses for their new dot Brand websites. Some examples include:

  • Aaa.aaa provides geolocating services to members of the world’s largest automobile association.
  • Wecare.weber showcases Weber’s corporate social responsibility initiatives.
  • Us.hisamitsu enables the Japanese pharma company to operate a compliance site for the United States.
  • Berlin.audi uses it as one of a series of mini-sites for main and independent Audi dealers.
  • Diagnostics.abbott also uses as a series of mini-sites focused on areas of excellence for this global pharma.

In contrast to the success of these examples, it should be noted that 73 dot Brands have been returned to ICANN. Some lost confidence in ICANN following protracted delays to the delegation; others have found the US $25,000 annual fee to ICANN and the burden of compliance for maintaining a registry at the root of the Internet unsustainable.

Now the game has changed. If there was no pressing need for a brand to own a registry pre-COVID-19, there might be in the changed world we are entering. Maintaining a stable and secure Internet presence will become more important as we look to virtual communication and e-commerce to help get us through pandemics and other disasters. The value of a walled-garden dot Brand registry that you own, managed to technical standards you set, offering Internet users a different route to information under your trademark that you control independently, could yet prove compelling for applying for a dot Brand in ICANN’s next round.

 

 

[In the first round,] when it was announced who had applied, many were astonished to see that … nearly one third had been submitted by brand owners.

“The nature of cybersquatting has changed since 2012 from pay-per-click websites to extensive phishing, selling of counterfeit products, or using domains to attack companies through spoof emails. All of these can potentially cost brand owners significant damages both monetarily and reputationally,” said Colin O’Brien, partner at Latimer LeVay Fyock in Chicago, Illinois, USA, and a longtime member of the Intellectual Property Constituency at ICANN. “The new nature of cybersquatting should cause brand owners to start discussions among their marketing, legal, and IT departments to determine whether to apply and how to protect their customers and their reputation online when there are hundreds more registries.”

The process of defining policy for the second new gTLD round is underway. INTA has participated both in its own name and through its membership in ICANN’s Intellectual Property Constituency. It won’t be until 2021 that the recommendations of the Subsequent Procedures Working Group are transformed into policies covering everything from the price of application (anticipated by many to be reduced to US $100,000) or the objection process. It is unlikely that dot Brand registries will have a simpler, less expensive application track; some stakeholders have called for this approach, arguing that there is no infringement at the second level in a dot Brand registry and very little administrative burden on ICANN as compared to an Open Registry where anyone can register anything.

“Companies and organizations would be wise to take advantage of this interim window to explore the value proposition of operating their own dot Brand top level domain,” says Cole Quinn, manager of the Corporate Domains program at Microsoft, currently serving as President of the Brand Registry Group (BRG), a trade association of dot Brand TLD registries. “There are certain things that can be accomplished from the right of the dot that can’t be done from the left of the dot under a generic or country code TLD. The consumer trust element alone is compelling, especially in the age of redacted WHOIS data. A TLD extension cannot be spoofed or misspelled like a second level domain name can, so a dot Brand namespace becomes a safe space, even at a glance.”

 

A dot Brand registry gives a brand the opportunity to stand alone, enhancing business continuity.

For example, brand owners operating their own dot Brand registries know who all the registrants are to the left of the dot, like “fan.brand” or “authorizedseller.brand.” They don’t have to rely on ICANN’s now redacted WHOIS domain registration directory service to find out important registrant information, and they can prevent misspellings and misdirection from bad actors.

So, while there are many benefits to owning and operating a dot Brand, there are considerable expenses and administrative functions, including building or contracting for the technical, back end registry operation becoming engaged in a contractual relationship with ICANN. Therefore, organizations should undertake a careful cost benefit analysis by a team that includes legal, technical, and marketing personnel. It is not too soon to start the analysis as much planning is needed to successfully apply for a dot Brand.


INTA is following closely the dot Brand as well as other new gTLD policy issues on behalf of its members. The ICANN Working Group responsible for subsequent application procedures recently published its final report, and INTA will be filing substantive comments by September 30.

 

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

© 2020 International Trademark Association