What can we learn from new gTLD registrant take up so far? 

Its early days for the new gTLDs. Can we learn anything from registrant take up yet? At the start of March 2014, the total number of registrations across over 130 new gTLDs was over 200,000, says Matthew Zook of Zooknic, which provides data and analysis for the domain name industry.  

The new gTLD, .GURU has attracted more than 40,000 registrations, .PHOTOGRAPHY 20,000, .TODAY and .TIPS 13,000 each. Five other registries have between 2,500 and 7,500 and the rest a meagre 1,000 or so. To have 200,000 registrations in the first quarter of the first year of the new gTLD program is hardly a tsunami when, for example, Nominet is registering over 105,000 .UK domains a month. Is this slow, low take up due to a lack of public interest or confusion at change of this magnitude? Is it because of poor marketing by registries and registrars or caution by rights owners that have the opportunity of priority registration in a Sunrise? Perhaps it is a combination of all these reasons – the natural consequence of a complex roll-out process.

The most keenly anticipated strings – .ART, .APP, .BLOG, .CLOUD, .MOVIE, .MUSIC, .SHOP – will not launch until much later this year when contention between the multiple applicants has been resolved. Some of these new gTLDs may capture the public’s imagination. Otherwise, we don’t expect to see any significant wave of registrations, other than in the geo-TLDs. The .LONDON new gTLD promises to be huge when it launches on 29 April. Meanwhile, if its innovation you want, you’ll have to wait for some of the “open restricted” and “.brand” registries to launch. What we have at the moment is what we’ve had for the past decade: registrations being sold to enhance online communication (and in the case of defensive registrations: registry coffers).

Com Laude offers corporate domain name management and online trademark protection for corporations worldwide. In addition, Com Laude offers the advice brand owners need in order to formulate a sharp strategy with regard to domain name registration in all the new gTLDs at the second level.

ICANN finally launches WHOIS website beta

We recently learned that this “new website, whois.icann.org, will be a centralised location for all WHOIS information, making it easier to learn about WHOIS, raise accuracy issues about WHOIS information and how to contribute to WHOIS policies”.
 
WHOIS – the database of registrant contact information – is a core part of ICANN’s mission. It was created in 1982 by the Internet Engineering Task Force (IETF) as a directory service for ARPANET users to locate the appropriate individuals to enable the resolution of any technical problems with the online network. ICANN adapted the IETF WHOIS in 1998 to fulfil the Department of Commerce’s requirement for a “searchable database”. Since then, it has evolved and is used for locating domain name registrants for aftermarket sales and law enforcement.
 
ICANN has the power to enforce the WHOIS protocol through the contractual relationships it has with registries and registrars, who are mandated to follow WHOIS protocols. In addition, registries and registrars are required to comply with ICANN’s Consensus Policies, which include a WHOIS Data Reminder Policy.
 
Despite these agreements, many WHOIS records contain inaccurate or invalid information, and some country-code TLD registries provide a confusing WHOIS, or no WHOIS at all.
 
This new online resource is a preliminary step towards improving WHOIS. Community members have been invited to view the beta WHOIS website and provide feedback. The second phase of the site is expected to go live in January 2014, when a search function will be added.

Com Laude Client Manager, Phillipa Dyball (formerly Phillipa Pook), advocated for a one-stop WHOIS shop back in 2011. It looks like she may now get her wish. Along with discussions on privacy and proxy service accreditation standards, this fresh look at WHOIS is long overdue but very welcome nonetheless.

Com Laude offers corporate domain name management and online trademark protection for corporations worldwide. In addition, Com Laude offers the advice brand owners need in order to formulate a sharp strategy with regard to domain name registration in all the new gTLDs at the second level.

And…we’re off! First new gTLD strings are delegated into the internet’s root zone

History has been made! On 23 October 2013, ICANN (the Internet Corporation for Assigned Names and Numbers) announced the first new gTLDs to be delegated into the internet’s “root zone”.

Akram Atallah, president of ICANN’s Generic Domains Division, proclaimed “It’s happening – the biggest change to the internet since its inception. In the weeks and months ahead, we will see new domain names coming online from all corners of the world, bringing people, communities and businesses together in ways we never imagined. It’s this type of innovation that will continue to drive our global society.”

This shakeup to the internet’s naming system is set to create opportunities to enhance competition and innovation on the web, through transforming how information is circulated, marketed and discovered online. VeriSign’s .com space is incredibly crowded, with many startups coining new words to name their company, just so they can acquire affordable .com real estate (e.g. Reddit, Spotify, Tumblr). These new gTLD extensions will transform the increasingly cramped domain name space, offering more variety and choice to all internet users.

The first delegated strings are:

You might notice that they are written in languages that do not use the Latin alphabet. That’s because ICANN decided to put Internationalised Domain Names (IDNs) first, to make the internet more global. Before today, aside from a few ccTLDs, IDNs could only be registered at the second level.

Now that the strings are online, it is up to the associated registries to sign up ICANN 2013-compliant registrars, coordinate PR and marketing efforts, publish their Sunrise Policy and issue their 30-day Sunrise Notice Period. In other words, this is a big milestone, but there is much work to be done before consumers start using domain names in these new pieces of internet real estate. That’s not likely to happen until the beginning of 2014.

How will ICANN handle 1,400 more new gTLDs coming online over the next few years? If reported alleged early violations are anything to go by, they will be completely overwhelmed.

How will trademark owners handle 1,400 new gTLDs coming online in the next few years? With trepidation and consternation. While they are given a chance to register their brands before infringers, it comes at a cost. Nevan Chellan, Com Laude’s Special Projects Manager for these trademark Sunrise periods, reports that “it’s still early days for brand awareness, but we are seeing an uptick in monitoring activity.”

How will the public react? Many have said that we don’t need these new gTLDs. We didn’t need our Kindle or camera phone a few years ago either. Now, they’re virtually irreplaceable.

Com Laude offers corporate domain name management and online trademark protection for corporations worldwide. In addition, Com Laude offers the advice brand owners need in order to formulate a sharp strategy with regard to domain name registration in all the new gTLDs at the second level.

The Trademark Clearinghouse: how to use it effectively  

With ICANN’s Trademark Clearinghouse (Clearinghouse) receiving more attention now that it has officially launched and is accepting trademark data deposits, key Clearinghouse‑related information and strategy questions are highlighted below.

First things first, the Clearinghouse is not a Rights Protection Mechanism; it is a cost management system. It was designed to allow trademark owners to deposit their trademark information into one centrally managed database for a single fee. Historically, new registries (such as .info or .biz, or more recently .xxx) have individually charged rights owners to “validate” the same trademark registration data. Trademark owners told ICANN that this model would not scale to over a thousand new gTLDs, so ICANN created the Clearinghouse to streamline and centralise trademark data validations.

Trademarks submitted to and validated by the Clearinghouse can be used, subject to ICANN’s “proof of use” requirements, to participate in new gTLD Sunrises. There is an exclusive 30-day priority period for eligible trademark owners to obtain a domain name matching their trademark prior to general public availability. These Sunrise registration opportunities are largely used by trademark owners for defensive purposes (i.e. to pre-empt cybersquatters).

In addition to Sunrises, ICANN will require new gTLD registries to provide a Trademark Claims service. Claims are a 90-day period following Sunrise where trademark owners are notified via the Clearinghouse of any domain registrations in new gTLDs that match their marks (however, this notification occurs after the registration and does not block a potentially infringing registration from occurring in the first place).

Some considerations for your Trademark Clearinghouse strategy: 

• Which marks to submit: Review the unrestricted registries where you need protection. Do they have a nexus requirement; for example, if you want protection in the .paris and .berlin registries, do you have one mark covering both jurisdictions or will you need to submit two marks? Do your preferred marks carry up-to-date ownership details? Will there be issues around assignees? What proof of use will you supply (mandatory if you want to participate in a new gTLD Sunrise)?
• Timing: Deloitte, the validation provider, has said that it takes them 20 calendar days to process an application. ICANN requires new registries to give 30 days’ notice before they open. A ten-day margin is not much. The active life of your Clearinghouse submission will commence when the first registry goes live. As new gTLDs are launched on a rolling basis, you may not need to use the Clearinghouse until 18 months from now, or you may be interested in the very first batch of new gTLDs.
• Subscription options: How long do you wish to subscribe your mark to the Clearinghouse? Deloitte are offering one, three, and five year options. As every new registry should be open within two years, a one year subscription may be too short but three may be too long.
• Whether to use an agent: Whether you will liaise directly with the Clearinghouse or partner with an intermediary. If you go straight to the Clearinghouse yourself, you should be ready to pay Deloitte directly via credit card, and you can only pay for ten registrations at a time (apparently for security). If you wish to act as an agent, you must pre-pay a $15,000 deposit to the Clearinghouse. You will also be required to store and manage Signed Marked Data (SMD) files.
• Trademark Claims notices: Who in your organisation will receive these notices across the 90 days for which they last? How will you react if a registration is made by a third-party regardless of a Claims notice? Have you got a list of up to 50 abused “brand-plus” terms (such as “lego-toys”) that have been the subject of UDRP or Court Actions on which you can also receive claims notices? What happens if such terms are applied for in the .auto registry when your registrations are in Class 15 for Musical Instruments?
• Costs: Deloitte have developed a complex pricing structure. The official fees are $150 for a single mark for one year, $435 for three years, and $725 for five years. Renewal costs are the same as submission costs (which in our view is unjustifiably steep, as re-validation is not very arduous). Com Laude's fees start at £80, and they are pleased to offer volume discounts and preferential rates for existing clients.

Finally, remember that the Clearinghouse is a floor not a ceiling. Inclusion in the Clearinghouse does not necessarily mean that you will be able to participate in the first phase of every Sunrise. Some registries will, for example, be prioritising marks owned by local companies before anyone else.


Contact tmch@comlaude.com  or +44 (0)20 7421 8250 for more information. 

Com Laude offers corporate domain name management and online trademark protection for corporations worldwide. In addition, Com Laude offers the advice brand owners need in order to formulate a sharp strategy with regard to domain name registration in all the new gTLDs at the second level.

Domain name developments from Com Laude

Here is the spring edition of Com Laude's newsletter [PDF].

Topic's covered include: 

• New gTLDs: the road ahead
• ccTLD updates from Australia to the UK
• The URS and the Trademark Clearinghouse explained

Excerpts:

New gTLD overview

In April 2012, ICANN received 1930 applications for 1409 unique character strings, of which 116 were IDNs (in scripts other than ASCII such as Arabic or Cyrillic); 899 of these applications were for keywords (meaning descriptive terms) applied for by investors; 637 or 33% were for company or brand names; 255 or 13% were keywords applied for by brand owners (Walmart and Safeway both applied for.grocery); and 139 or 7% were for community or geographic terms (.lat; .paris).

Application for a 10 year licence to operate a gTLD registry, with a presumption of renewal, cost $185,000. Any incorporated organisation could apply for any string, except those which

appeared on ICANN’s list of reserved names and the ISO3166 A and B lists of country codes and protected geographic terms. There were no restrictions on industry leaders applying for

industry terms or investors seeking to run a registry targeted at a regulated sector. There was no public interest test. Each application (numbering in the region of 250 pages) is being evaluated on operational, financial and technical grounds and has to score 30 marks or more out of 41 to pass. Each applicant had to submit to background checks. A Letter of Credit to the value of three years of emergency registry operation was required as well as a contract with an Escrow Provider. Most applicants selected as their Registry Service Provider a proven

operator of gTLD or ccTLD systems. Where two or more applicants have applied for the same string, the mechanism of last resort if the applicants cannot find a solution amongst themselves is an ICANN sponsored winner-takes-all auction. The order in which applications are processed was decided by a Prioritisation Draw held in Los Angeles in December 2012:

IDN applications were batched first, then ASCII applications.

Trademark Clearinghouse update

On 26 March 2013, the Trademark Clearinghouse (TMCH) finally began accepting trademark data for validation. The TMCH is a platform for cost effective rights protection in the new gTLD space, which will allow trademark owners to deposit their mark information into one centrally managed database for one fee. 

Trademarks successfully submitted to the TMCH can be used, subject to proof of use requirements, to participate in all new gTLD Sunrises (a 30 day period when trademark owners can apply to a registry to obtain a domain name matching its trademark) and the Trademark Claims service (a 90 day period following Sunrise where trademark owners are notified via the TMCH of any domain registrations in new gTLDs that match their marks).

The technical system is still being developed and is targeted to roll out by 1 July 2013. ICANN also revealed that they have agreed on a one off charge of $5,000 per gTLD for registries to

connect to the TMCH. This is significantly less than the figures that were suggested originally (ranging from $10-15,000), and is partly due to an ICANN subsidy of $400,000 which they

will pay to the TMCH to offset some of the potential cost for the registries. It still nets Deloitte and IBM a cool $7.5m for a service that is incomplete and six months late.

In addition, a $0.30 fee will be charged to registries per domain registration during the Sunrise and Claims periods.


Contact info@comlaude.com or +44 (0)20 7421 8250 for more information. 

Com Laude offers corporate domain name management and online trademark protection for corporations worldwide. In addition, Com Laude offers the advice brand owners need in order to formulate a sharp strategy with regard to domain name registration in all the new gTLDs at the second level.