DigitalBrandNews

More companies are giving serious consideration to a .brand now that a definitive timeline for New gTLDs has been established by ICANN.   There are a number of strategic factors in determining if a gTLD is warranted, with significant weighting on an organization’s brand and online marketing strategy. The below statistics compiled from organizations which have expressed interest to Melbourne IT DBS may provide a high-level benchmark for comparative purposes[i].

Of B2B and B2C companies, consumer facing companies are the most interested in a .brand (65%).  Across both groups, 92% are interested in applying for their primary brand, and 9% for a product brand(s).  11% indicated interested in applying for a generic term.

The purpose for applying is nearly evenly split with 48% considering an application primarily to protect the brand and 45% to create a competitive marketing advantage.

The most interest by industry segment is:

• Entertainment, publishing and media industry (19%)
• Financial services (19%)
• IT and Telecom (15%)
• Travel and tourism (7%)
• Consumer goods industries (7%)

Since the spring there was ittle indication of a definite timeframe for new gTLDs but now ICANN has released a timeline showing May 30, 2011 as the date the first applications will be accepted.

How many new gTLDs will ultimately be proposed is still anybody’s guess, but in our estimation few will create any significant trademark protection issues. Historical data published by WIPO (the World Intellectual Property Organization) shows the vast majority of infringement cases are related to .com domains. In the long run this may actually work in favor of new TLDs. Many new gTLDs will be targeted to specific interests, categories and groups that will be identified by the extensions themselves.

With .brands being added to the mix, consumers can also be expected to become educated to the changing nature of domains. This was made clear in our proprietary research of Internet users where 39% of a broad audience stated they would trust a website with a known brand name used at the end of a URL more than one ending in .com. Even more, 44%, said having a .brand URL would make it easier to navigate to their desired destination.

As we all know, the Internet is fluid and domain names will constantly be adapted as new and innovative applications are developed. Like the Internet and the underlying technology in general, domain name management will become more technical and complex and require greater coordination across enterprises. The challenge of managing all this intersects at the IP manager’s office.

Initially, the Internet structure drove both domain name selection and user behavior. Now the opposite is occurring as a result of user behavior, and in no small part, the form factor of devices used to connect to and search the web. In the past year Apple alone has sold over 85 million iPhones and iPod Touch devices. With other Internet enabled “smart” devices, there are at any time likely to be close to 150 million people who have the ability to access the web using devices with a miniature keypad.

Miniaturization has also spilled over into the domain world. Short .com URLs have long been purchased. Now, select ccTLDs are becoming popular with the shift to tiny URLs. Shortened URLs have the benefit of being memorable and their brevity is a boon to mobile device users. High profile “shorties” include t.co for Twitter, goo.gl for Google and fb.me used by Facebook. Google has also responded to this change by suggesting entire search phrases based on just a few character entries.

The implications of this reach beyond just search and social media users. Internet users expect the companies they do business with to provide contact convenience as well. IP managers learned to loathe the introduction of TLDs as it meant more defensive registrations, but today it is important to selectively add domain names that can provide a competitive advantage. Domain names need to be simple and memorable to have the greatest impact and results. And as with all domains this should include registering likely misspellings of the desired URL.

The White House senior advisor for intellectual property enforcement requested a meeting at the White House in late September on voluntary measures to crack down on online pharmacies trafficking in counterfeit prescription medications. The World Health Organization estimates 10% of global pharmaceutical commerce involves counterfeit medications. To date there has been no news released on the outcome of the meeting.

For more more on this see the blog  Krebs on Security

After consideration of substantial public comment, both in support of, as well as in opposition to, the proposal to require EOIs be lodged for new gTLDs, the proposal has been withdrawn by the ICANN Board. The ICANN Board determined that the benefits of proceeding with an EOI proposal were outweighed by costs of potential delay to the new gTLD program and the lack of certainty about the date when the overarching issues of the program could be resolved. The ICANN Board resolved to continue to work toward the launch of the new gTLD program.

In other announcements within the context of the new gTLD process, ICANN will require strict separation of entities offering registry services and those acting as registrars. No co-ownership will be allowed.

There was also support for the Clearinghouse and URS proposals that were posted on 15 February 2010 for public comment. Subject to amendments in response to the public comments the proposals are expected to be included in version 4 of the draft applicant guidebook, which is planned to be published in time for the Brussels meeting of ICANN in June 2010.

The resolutions are a positive outcome for brand owners, as it shows that ICANN is beginning to incorporate additional protections for brand owners, and to focus its resources on resolving the remaining issues prior to launch of new gTLDs.

Follow this link to view the complete list of ICANN Board resolutions from the Nairobi meeting

With the potential for hundreds of applications for New gTLDs in the first round ICANN is looking to have a global roster of qualified reviewers in place.  So far the growing applicant list includes names from well known consultancies including Deloitte, Deloitte & Laga, Ernst & Young, GeoLang LTD, KPMG and Webb Henderson.

Given the reputation of these firms this indicates applications will receive a great deal of scrutiny and need to contain detailed and thoroughly documented support information.   For entities interested in applying for a new gTLD, this underscores the necessity of securing qualified assistance in preparing the application and operational plan.

The announcement with the current list of applicants can be viewed on the ICANN Website.

ICANN CEO Rod Beckstrom penned his thoughts on being selected to lead the organization and his vision to support globally unified Internet.

Specifically relating to the new gTLD initiative are the following comments:

The Internet has historically thrived whenever the system is opened up further to allow users to express their creativity and innovation. We are now working on opening up the top-level domains so that not only nations but also other peoples and groups can have a unique identity on the Internet.

For example, the chief of the Zulu tribe, His Majesty King Goodwill Zwelithini kaBhekuzulu, recently sent a letter notifying us of his intent to register the dot-zulu domain name so that different but related businesses and other groups can be linked by their domain name to the entire Zulu community. According to His Majesty, “We believe that the .Zulu TLD, as conceived and proposed by the Dot Zulu Project Inc. represents the best interests of the Zulu community and will be able to provide a viable structure for us as an evolving community.” New York City and the city of Berlin have expressed a similar interest in their own domain names. It is impossible to imagine the possibilities that could occur when these and a multitude of other TLDs are opened.

The ICANN responsibility to support methods for securely introducing new TLDs was specified in the original White Paper that led to our formation. And our original 1998 memorandum of understanding with the U.S. Government stated one of our key responsibilities this way: “Oversight of the policy for determining the circumstances under which new top level domains would be added to the root system.” It went on to say, “The Parties will jointly design, develop, and test the mechanisms, methods, and procedures that will achieve the transition without disrupting the functional operation of the Internet.” According to Chairman of the Board Peter Dengate Thrush, “We are declaring success on these points. It’s been 11 years. We have developed and tested those mechanisms, and we find that they work.”

Read the full article here

At the recent ICANN meeting in Sydney the Intellectual Property Constituency’s Implementation Recommendation Team (IRT) presented details of their recommendations. As expected, the recommendations were the subject of extensive and spirited discussion throughout the week-long meeting.

Members of the non-commercial user’s constituency were the most outspoken against the recommendations in general, calling for more detailed information and more precise descriptions of the types of abuse being targeted in the recommendations. On the other hand, The Government Advisory Committee (GAC) reported that it’s members benefited from the IRT briefings and the GAC believes that these are important issues that deserve focused attention to be resolved prior to the posting of the third version of the Draft Applicant Guidebook. Details of the presentations as well as a full transcript of the session are available by clicking here.

Summaries of Topic Discussions

The IP clearing house and IP claims concepts received strong support overall. As expected, there were many questions focused around who would create, operate and manage the clearing house and where the funding will come from. There were also discussions around other potential uses of the comprehensive database, and developing controls to ensure that the data wouldn’t be used for other than the intended purposes.

The proposed Globally Protected Marks List for protection of highly recognized names didn’t receive substantial support. The perception was such a list only benefits large businesses and offered no real benefit to the rest. Further, any minimum criteria likely would generate complaints from those who just miss making the list regardless.

The Universal Rapid Suspension System drew substantial criticism. More than a few saw the proposal as a replacement for the existing UDRP process. Several questioned the timing and mechanisms for notifying registrants of a dispute prior to a domain name being suspended. A number of opponents suggested considering URS elements as part of an overall review of the UDRP process. Ultimately there appeared to be a general willingness of agreement to improve the current dispute processes to assure mis-use by either respondents or complainants is avoided. The discussions between those for and against the URS made it clear that more detailed examples and cases of how the current system is being abused would help explain the reasoning for particular suggested changes.

ICANN is running further public forums to facilitate on-going discussions with the Internet community regarding workable solutions to some of the outstanding, overarching issues, particularly trademark protection and malicious behaviour. The forums will be in New York on July 13, London on July 15, Hong Kong 24 July, and Abu-Dhabi (tbd).

In advance of the organization’s June 24 meeting in Sydney AU, ICANN has published an analysis of the public comments to Version 2 of the Applicant Guidebook. The 214 page document lists a summary of comments by topic and ICANN’s analysis of the topic and proposed position. Click here to go directly to the document.

A number of key issues within the current applicant guidebook are yet to be resolved, but many proposed changes have been made and are now available for review and comment. The public review and comment period to the Revised Excerpts and Additional Explanatory Material on the changes opened on 31 May 2009 and extends through 20 July 2009.

Publication of the third, revised draft of the guidebook is pending resolution of overarching issues which has to happen before the first round of applications can begin. A key outstanding issue is protecting consumers and preventing abuse. A proposed measure that has ICANN support is the publication of a centralized, thick WHOIS database. This is seen almost universally as a way to lessen the burden on brand holders, law enforcement and others by helping to quickly and efficiently curb abuse in new gTLDs. In addition to recommending the thick WHOIS implementation, ICANN acknowledged the need for the development of an efficient mitigation processes at the registrar level and additional fine-tuning of proposed dispute resolution processes.

ICANN outlined plans to conduct consultative meetings on the numerous trademark issues beginning in Sydney in June, and continuing through July in other geographic regions on the effectiveness of proposals in addressing the overarching issues submitted by the IRT and others. The goal of the meetings is to resolve the outstanding issues in order to publish the final Applicant Guidebook in December 2009, allowing the first round of gTLD applications in the first quarter of 2010 as previously proposed. However, ICANN clearly stated there are no plans to launch the process absent resolution of the key outstanding issues.

ICANN’s Sydney meeting will be held 21-26 June 2009.

Click here to access the public comment analysis and the amended guidebook.

March 17, 2009

Allegations of cybersquatting by trademark holders continued to rise in 2008, with a record 2,329 complaints filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) administered by the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center.

In a report containing details on cybersquatting the WIPO Director General also took the opportunity to comment on the New gTLD process. “The creation of an unknowable and potentially vast number of new gTLDs raises significant issues for rights holders, as well as Internet users generally,” said Mr. Francis Gurry, WIPO Director General. “Cybersquatting remains a serious issue for trademark holders .”

This statement comes after ICANN has agreed to form a committee specifically to address these and other concerns of trademark holders before moving forward with approving new gTLDs.

Read the full WIPO release