Tag:  “TLD”  | (2) posts

What opportunities and risks come with the new Top Level Domains (TLDs)?

When ICANN (Internet Corporation for Assigned Names and Numbers) launched the new TLD Program, the purpose was to stimulate innovation and competition in the domain- and Internet industry and to give the possibility to own and run a top level domain.

ICANN received over 1900 applications for 1400 new top level domains. A total of 575 of them was from trademark holders applying to register their trademark as a suffix. Out of these, 77 applications used city names or other geographical connections. Another 107 applied for new suffixes under different, non-Latin, languages. A total of 561 generic words have, or will, become new top level domains.

Up until today, 583 of these new top level domains have been activated and are now in a phase referred to as ‘General Availability’. A total of 27,593, 028 names have been registered.

In a world where digitisation is constantly accelerating, these new endings provide both opportunities and potential risks. By using a classic SWOT-analysis, we can point out the pros and cons.

Strengths
A strength is to offer accessibility and a communicatively strong name.

Today you can’t find any available two to five letter combinations under .com and we are running out of six letter combinations as well. The prices for short, one-word .com domains in the aftermarket are increasing. It makes sense to consider travel.agency instead of travelagency.com when the price tag is $3’000 as opposed to $300’000.

The fastest growing Internet markets are not in the west. Some of the new domain extensions offer people the option to use their native language. According to www.nTLDstats.com 42% of all registrations of new domain extensions are made in China. Only 10% come from the U.S. Being able to communicate and trading online using non-Latin keyboard will become increasingly common as the Internet usage is increasing around the world.

Weaknesses
The general awareness is still low, which is a weakness.

We are still in the early stages of new domain extensions and no one knows which role they will end up playing in the domain name eco system. They are late comers to a well-established market where the .com still is king and the first choice for any company looking globally. We don’t know if the new domain extensions will be able to compete on the same level with .com in the future. Next generation will not only know the answer, they will create it.

Opportunities
Shorter is better when it comes to domain names and the new domain extensions index as good as .com with Google.

A clear trend in the aftermarket is that with more opportunities and greater accessibility the market looks for shorter names under the new extensions and the value for long, i.e. three words .com domain names is decreasing. It is already proven that new TLDs are indexed just as well as the older top level domains such as .com and .net. Therefore, it is also natural that the shorter and more descriptive domain names are more attractive than long and complicated multi-word domains.

In the 90’s and early 00’s, some people still questioned whether it was economically viable to register keyword domain names under .com due to the uncertainty of usage.  Today we know better and with the knowledge of how Google index the new domain extensions, and the fact that Google themselves have applied for 101 top level domains, makes them a good complement to the current domain portfolio.

Threats
Trademark infringements and fraud/phishing attacks are considered threats.

Although trademark infringements in the domain name industry is not a new issue, domain names are to be considered and handled as very important intellectual properties due to the risk of infringements.

As with the .com, and other established domain extensions, we see typo registrations and/or direct infringements of trademarks used in attempted fraud and phishing attacks.

The problem is not under any specific extension. However, the people behind the attacks use the extensions in the same way in which they are intended to be used. This means that we see more economic related fraud and phishing attacks from finance related extensions and more security breach attempts from support/tech extensions.

ICANN has tried to be proactive around these issues by establishing Trademark Clearing House for trademark holders and complemented the UDRP (Uniform Domain Name Resolution Policy) with a ‘Fast Track’ called URS. It is still an issue which can, and should, be monetised.

In summary, the new domain extensions provide excellent opportunities to improve and develop the digital marketing and digital presence of businesses, but it also requires proactivity and action.

Marcus Glaad, Dotkeeper AB

Trademark holders think it .sucks!

Defensive tactics should be a part of the brand protection strategy of every trademark owner. New developments within the area of domain names also make it essential to consider which offensive strategy to have for brand protection.

Domain names are registered with the central authority called ICANN (Internet Corporation for Assigned Names and Numbers). A few years ago it was decided to expand the list of website suffixes (Top level domains – TLD) from the traditional as we know, i.e.  .com, .dk and .se to an expanded list.

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A long list of TLD’s have been registered already ranging from .adult to .donut, but the newly registered .sucks is causing quite a bit of controversy. Now, you actually have the opportunity to register your trademark under the .sucks domain, and perhaps brand owners should have done so. As of 1 June 2015 non-company affiliated registrations are accepted at the .sucks domain. And this for only $ 9.95. Before sunrise the price for brand owners was $ 2,499. This significant difference in price has also caused a lot of harm; some have even called it economic extortion[i].

Several companies and also celebrities are concerned that their names may be associated with domains and websites that will be created just to discredit these and cause harm to their brands. Apple, Kevin Spacey and Tailor Swift have already registered under the .sucks domain. Actually the .sucks domain was expressly created as being a platform for criticism, “designed to help consumers find their voice and allow companies to find value in criticism”. Vox Populi, the registry company behind .sucks, says they are actively seeking companies to register their brands on the .sucks domain, arguing that it has “the potential to become an essential part of every organization’s customer relationship management program”. They do, however, also hope that the small price for non-company affiliates will attract consumers to register and create a platform for discussion and debate of the different brands. The company has even released a video that includes an endorsement from consumer advocate Ralph Nader, and it includes scenes from civil rights protests with the voice of Martin Luther King. Follow the link to see the video:

The fact that consumers are allowed to use a company name or trademark in a fair manner for the purpose of honest, good-faith criticism and complaints, puts brand owners in a difficult position, as it makes .sucks domains difficult to challenge in UDRP-cases[ii].

Many companies have, however, been dealing with this before, as it has been possible to register domains such as, e.g. x-brandsucks.com since the beginning of the domain system. The criticism and complaints towards a specific brand do however become more explicit under the .sucks domain. Moreover, even when brand owners actually have registered their trademark under .sucks, it is still possible for consumers to register variations, such as x-brandreally.sucks.

Therefore we at Awapatent as IP professionals urge trademark owners to decide which approach to have towards this issue, and preferably as an integrated part of their IP strategy.

At Awapatent we stride to help brand owners in having the best IP strategy possible, we assist our clients in navigating through challenges like e.g. the .sucks domain issue. We also offer surveillance of the registration of third party trademarks in Trademark Clearinghouse in relation to such new TLD’s.

Maria Dam Jensen, Associate, Legal Counsel

[i] http://marketingland.com/controversial-sucks-domain-almost-here-121505
[ii] Uniform Domain Name Dispute Resolution Policy