A interesting article, from the trademark holders perspective, regarding ICANN proposal for issuing an unlimited number of new domain extensions appeared in the Intellectual Property Watch blog.
Trademark holders are none to happy about protecting their brands over possibly hundreds of new extensions.
J. Scott Evans, former chair of ICANN’s Intellectual Property Constituency and senior legal advisor for Yahoo said If…you’re a trademark owner, all you see is a greater investment you have to take to these entities to protect your trademark from abuse.
“The only thing we see here is more investment that we make initially up front to the owners and operators of these particular TLDs,” and more money spent by trademark owners to defend their brands against “nefarious uses.”
The post cited sources who predicted that there will be hundreds of new gTLD’s in the first round of applications
“In the coming years, hundreds or thousands of new domain name suffixes could be approved, which will confuse consumers and raise new challenges for companies whose brands are already being exploited in the existing Internet domain space,”
“Opening the floodgates of new website suffixes may certainly be profitable for ICANN, but brand owners, already suffering from the proliferation of trademark infringement on the Internet, will face increasing burdens.”
According to the post, increased gTLD’s will result in more cybersquatting, kiting, front-running and sniping.
You should check the article out.
waaaaa…if 1000 new extensions were made thats about $7000 to protect their tm’s…how much do you think they spend on Attorney retainers per year? Not to mention actual costs when they do sue someone.
Tim
Trademark holder have to apply during the sunrise period. Fees during the sunrise period are usually around $100 per.
Moreover most of the “new” extensions are priced much higher than $7 a year. Look at .mobi, .me etc
$7K for each TM out there would be a lot of money for companies and individuals to put out, and a lot of easy money for registrars. And do those TM holders get any added value for having to putting up that additional money to protect what is already theirs? In addition, I would think that opening up the tld extensions would seriously dilute the value of the current domain real estate. Or possibly cause a lot of confusion. Are we really running out of domains already that we need more tlds? Being that I am not a registrar, I don’t really see the value of opening up the tlds.
David
The money generated by the new gTLD’s is going to ICANN first and foremost, then the new registries that will spring up.
For everyone else its a losing deal.
Confusion, trademark infringement, cost of defensive registration are just a few of the problems the new extensions will cause.
Its not a good idea.
I kind of agree with Tim, Some brands are ready to sue for 1000 of dollars.
Besides the fact, these companies cannot halt the natural growth of the internet. It makes no sense why we should not create new possibilities for growth simply because trademark holders are lazy enough to ignore a new extension.
This angers me, they are not taking into consideration the fact that there will be thousands of new businesses springing up using these extensions. Not to mention the addition of new extensions will push more nations to become internet savvy.
Someone make sense please… this is disturbing.
Daniel
Its more than trademark holders that have concerns about these new extensions.
Say you own newyorkrealestate.com. Then they allow .realestate as a new extension. now someone can use newyork.realestate
How many people are going to type in newyork.realestate.com?
What it there is a .newyork
Then you can use realestate.newyork, newyork.realestate
Talk about confusion.
And if you own the .com you would feel compelled t go for the .newyork and .realestate version which will be aucitoned off and that guy is going to have to spend tens or hundreds of thousands of dollars on what? Domains they don’t want or need but have to have.
ICANN has become obsolete, look at their paychecks.
The US trade commission needs to take over temporarily while they clean hour and put someone else in charge to clean house.
We’re not talking a $7 a year fee, we’re talking a new top-level domain system where an individual or company could pay what will likely be tens or hundreds of thousands of dollars for their rights to domain.trademark like domain.yahoo or domain.apple No big deal. What happens when when domain.bob decides to park yahoo.bob or google.bob (bad examples as they have the lawyers and resources to fight this). How about the midsized business owner who now sees his trademark.bob and thousands others popping up.
John
That is not going to happen
Mickie
You are correct
Great post – It would be good for many people to change professions and become Lawyers – as a Lawyer you will make a 10 figure income with all the trademark infringement court cases WorldWide once the New domain name extensions come out in the open (Online)
Great topic Michael, and I had to step up and comment on this…
(disclaimer: this is made personally, not necessarily an opinion shared by my employer)
Those of you who follow me or know me understand my reach and background in the ICANN and new TLD space, and I have blogged about the numerous extensions or ideas that have been pitched to me.
There’s an interesting rhetorical question that was raised at the ICANN Studenkries as to if some of the TLD proposals for brands, if allowed by ICANN to be used for sole registration purposes (where there would be only one registration, the TLD itself) might hypothetically be in direct conflict with “RESPONSIBILITIES OF THE PARTIES”; “PROHIBITIONS” (V.D.1) of the Memorandum of Understanding with the NTIA/DOC, in which ICANN could not become a registry.
If you noodle on that for a minute, really think about it, and then pause to consider the difference between an ATT.COM or IBM.COM versus a .ATT or .IBM, one begins to recognize that there is a possibility of a large number of brands heading in that direction.
One of the thoughts on new TLDs is that many of the submissions are going to be brands locking down their TLD as sole registrant or as a closed community that would have no registrars or registrants.
Many of the larger brands are looking at new TLDs with a massive pucker factor, because of all the sunrise and other matters that they have to manage and track.
Some Brands have considered embracing the new TLD process, in the manner that if they had a . it would help to reduce the massive costs of proactive brand protection as we take a sip from the firehose of new extensions we may face.
[http://www.ntia.doc.gov/ntiahome/domainname/icann-memorandum.htm]
Section V, “RESPONSIBILITIES OF THE PARTIES”,
Sub D “PROHIBITIONS”,
Item 1 “ICANN shall not act as a domain name Registry or Registrar or IP Address Registry in competition with entities affected by the plan developed under this Agreement. Nothing, however, in this Agreement is intended to prevent ICANN or the USG from taking reasonable steps that are necessary to protect the operational stability of the Internet in the event of the financial failure of a Registry or Registrar or other emergency. “
Jothan
I would expect many brands to apply for their own extension.
Afterall its pretty cheap ($100K-$250K) to get
What is the downside?
Not suggesting a downside, because brands have their own approaches to what their online strategy.
As many folks like yourself or I with tenure have seen play out, there are some very progressive brands out there with respect to their online and internet adoption.
And there are still many that have not adopted the internet as a way to grow and expand their presence and keep having to react to the evolution of the market around them.
What I am hearing in the IP world is that the initial reaction to adding more TLDs is that it will massively expand the costs for a brand to enforce their famous marks or trademark strings by the number of new extensions.
So they’d have to do sunrise if they are proactive or they’d have to ACPA or UDRP if they are reactive and for many this is a daunting workload just with the current count of TLDs. When the world has a situation of a massive TLD introductions….
Can I get an “Oy Vey”?
That said, there are many in the intellectual property space that see the new TLDs instead as opportunity.
If I were Kraft Foods or Johnson and Johnson or one of the brands with more of a hip and savvy strategy I would be looking at saying “screw that process of registering and reacting in these new TLDs, my customer will know me as ., and thus the . will be less dilutive and god bless those that go register them, I’ll just react to the onerous ones as they arise.
But my point in that comment was that it will help to drive and clarify the definitions of PROHIBITIONS in ICANNs MOU with the USDOC if that starts to happen.
In theory, does that not begin to make ICANN the registry and create a scenario whereby brands are not interacting with a registry or registrar or registrants but simply with ICANN itself?
Is ICANN then competing directly with the incumbent or new to be introduced registries?
That’s the rhetorical question to ponder that has been posed. It is worth some thought.