INTA Members Discuss New gTLD Experiences – The Good, the Bad and the Ugly!

International Trademark Association logoBrand owners have mixed views on the introduction of new gTLDs with some seeing them as an opportunity “to provide reassurance to customers”, concerns over how to deal with defensive registrations, uncertainty with how to use brand gTLDs and an interest in future application rounds.

These were some of the views expressed by corporate practitioners from a number of countries representing a range of industries who took part in two In-House Idea Exchange teleconferences on “gTLDs: One Year Later,” presented by INTA’s In-House Practitioners Committee.

For brands that applied for their own gTLDs, “some … 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.” But not all companies “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.” And for those that did not apply, the main reasons given by teleconference participants was the high cost of the application and lack of relevancy of domain names due to greater use of search engines and apps.

Brand owners seemed to question the relevance of domain names and thought there were only a few of the new gTLDs they would consider registering domains in. “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.”

A few examples of how companies were dealing with new gTLDs were given. One company said they “used to employ an extensive defensive strategy, which included registering spelling variants and typographical errors, [but they are] now only registering the exact trademark.” Others are “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.”

As would be expected among brand owners, the controversial .sucks gTLD was a topic of discussion. “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.’”

On Sunrise periods, most participants said they “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.”

And when looking ahead to possible future application rounds, the participants said they were interested while the teleconference 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.”