Does the GDPR negatively affect enforcement efforts?

Does the GDPR negatively affect enforcement efforts?
Image source: mohamed_hassan via Pixabay

The General Data Protection Regulation (GDPR) has without a doubt a negative impact on the enforcement efforts, according to the participants at the INTA 2019 annual meeting (International Trademark Association) in Boston.

Margaret Lia Milam, domain name strategy and management lead at Facebook warned that the platform’s scale makes it a “huge target for bad actors”.

Milam stated that because the site is working at such a scale, it cannot turn to lawyers for the “thousands” of requests it receives.

Statton Hammock of MarkMonitor said that MarkMonitor had suffered a loss of efficiency of 12% due to the GDPR. His team has “historically used WHOIS to protect IP rights” but because of the GDPR, all the data they have cached “become less and less useful with each passing day”.

Alex Deacon, founder of Cole Valley Consulting, echoed Milam and Hammock’s comments warning that the Spamhaus Project, an international organization aiming to track emails spammers, is struggling to manage its blacklist because of the GDPR.

Cybersquatting: Increase of UDRP complaints filed with WIPO in 2018

Cybersquatting: Increase of UDRP complaints filed with WIPO in 2018
Image source: janjf93 via Pixabay

In the domain names’ world, the rules applied by many registries of “first come, first served” often lead to many cases of abusive registrations and of cybersquatting in particular. This is a practice that consists in taking a domain name by registering it, using or mentioning a trademark, a business name, a patronym or any name on which the applicant has any right, in order to make material or moral profit from its current or future notoriety.

In order to fight against these fraudulent actions and to assert their rights, brands’ owners can implement a targeted action to recuperate or suppress the cybersquatted domain name, called UDRP procedure (Uniform Domain Name Dispute Resolution Policy). This procedure is administered by an Arbitration Center like the one of the WIPO, the World Intellectual Property Organization.

According to the WIPO’s General Director, Francis Gurry: “Domain names involving fraud and phishing or counterfeit goods pose the most obvious threats, but all forms of cybersquatting affect consumers. WIPO’s UDRP caseload reflects the continuing need for vigilance on the part of trademark owners around the world.

UDRP complaints filed with WIPO in 2018*

On March 15, 2019, the WIPO published its last annual report on domain names’ disputes.

In 2018, the WIPO’s Arbitration and Mediation Center received a record of 3447 UDRP cases filed by brands’ owners, i.e a rise of 12% compared to the previous year.

Cybersquatting: Increase of UDRP complaints filed with WIPO in 2018
Source: WIPO Statistics Database

However these disputes concerned 5655 domain names, a decrease comparing to 2017 which counted 6371 names.

The main gTLDs in the cases filed with WIPO are unsurprisingly, the .COM (far ahead with 72.88%), the .NET (4.62%), the .ORG (3.50%) and the .INFO (2.23%).

Regarding the disputes on the domain names registered in the new extensions, they represent nearly 13% of the disputes, mostly in .ONLINE, .LIFE and .APP domains.

And lastly, nearly 500 complaints regarding names registered in ccTLDs have been filed, nearly 15% of all the disputes administered by the WIPO in 2018.

The 3 main sectors of complainant activity are the sectors of banking and finance, biotechnology and pharmaceuticals, and Internet and IT.

Geographically, France is placed second with 553 cases filed with the WIPO, just behind the United States (976 complaints) and is one the most reactive countries on this subject.

Note that on all the UDRP cases filed in 2018, Nameshield ranks second in the filing world complaints with 343 cases filed and 66 represented customers**.

Our teams are of course at your disposal to inform you on the possibilities of contentious domain names recovery actions.


*Source: WIPO Statistics Database

**Source: Nameshield’s report on UDRP procedures, 2018

19 years after: UDRP in few figures

19 years after: UDRP in few figures
Image source : Nick Youngson CC BY-SA 3.0 Alpha Stock Images

Launched in 1999, the UDRP process (Uniform Domain Name Policy) is today the fastest and the most affordable solution for resolving clear cases of cybersquatting.

Indeed, UDRP offers to brands owners a transparent process, carried out by independent experts allowing them to retrieve or delete a domain name infringing their brands. It is important to note that the expert cannot allocate the damages and interests to the requester.

MARQUES, a European association representing brand owners’ interests, raised, on the 1st of February 2019 in a letter addressed to ICANN, the issue of the costs supported by the brands owners for the defense of their brands in case of cybersquatting.

The association collected several information regarding UDRP complaints registered with seven Arbitrage Centers providing or having provided this process, and in particular the ones concerning the number of UDRP complaints filed and the associated costs.

In particular, between 1999 and December 2018, the WIPO (World Intellectual Property Organization) registered 42 535 complaints filings. Knowing that the cost of the arbitration fees of the WIPO (besides the representation fees) is at least $1,500 USD, WIPO then collected at least $63,802,500 USD from administrative fees over nearly 20 years.

Furthermore, MARQUES proceeded to an estimation of the costs regarding complaint filings by taking into account the fees of the representation by a legal consultation and concluded that the cost of a UDRP complaint filing would be $5,000 USD. Knowing the arbitration fees, the representation fees by a legal consultation would then be $3,500 USD.

Thus MARQUES estimates the costs (which regroup administrative fees and legal consultation fees) supported by the trademarks owners are $360,190,000 USD for the period 1999 to the end of 2018.

However, some members of the association, think that this is a low estimation and that it would not take into account other expenses related to the protection of their rights (revenue loss, monitoring costs, defensive registration, lifting anonymity, research, etc).

The blockchain at the service of domain names

The blockchain at the service of domain names
Photo’s author : Ethereum – Source : https://www.ethereum.org/assets

The case of Ethereum foundation and the «.ETH » extension.

Ethereum is a foundation created during 2015, by Vitalik Buterin, a 21 years old Canadian. This foundation aims to promote the Ethereum blockchain technology, created by this young computer engineer, who proposes in addition to a virtual currency, like the Bitcoin blockchain, the possibility to create applications ensuring traceability, inviolability and sustainability of the transactions they manage. To allow to the greatest number of people to access to these applications, the Ethereum foundation has recently presented the ENS for «Ethereum Name Service», and its corollary, the «.ETH» extension.

Back to the Blockchain technology

For the record, the concept of blockchain, can be defined as being « a technology of storage and transmission of information, transparent, secured and operating without a central review body » (source: https://blockchainfrance.net/decouvrir-la-blockchain/c-est-quoi-la-blockchain/).

Thus, if we take the example of the Bitcoin blockchain, the purpose was to create a virtual currency. The major interest consists in the absence of any central regulatory body, since it is controlled and managed by the community members, in a fully decentralized way. Any transaction done on the blockchain leads to an inscription in a block, published on a registry shared between the members. The transactions’ inscription in a block is carried out by « miners », who check, register and secure the transactions in the blockchain. This database hence lists all the transactions in blocks, creating a blocks chain supposed to be immutable and inviolable, due to the use of electronic signatures, and redistributed on the network, since it is decentralized.

Ethereum blockchain also has its currency, namely the Ether. But unlike Bitcoin, Ethereum didn’t create a virtual currency but has extended the use of the blockchain to other applications: the «smart contracts». Thus, Ether must not be considered as a currency but rather as a consumable allowing to exchange on the blockchain, use the applications it hosts.

The « smart contracts » concept

Ethereum proposes many possibilities of decentralized applications usable on its blockchain. These smart contracts are defined by the Blockchain France website as being « autonomous programs, which once started, automatically execute predefined conditions. They operate as any conditional instruction of « if – then » type (if such condition is verified, then such consequence is executed) ».

Concretely, this is a decentralized application, developed according to the Ethereum programming language (the Solidity), which automatically executes predefined instructions, on the conditions that the requirements are met, without the assistance of a third party, and ensuring that no modification is possible. These programs are executed on the Ethereum blockchain and controlled and certified by its members.

Thus, the promise is to delete intermediaries thanks to the total decentralization, managed by the processes automation.

For example, among possible applications, Ethereum foundation has announced on May 4th 2017, the creation of Ethereum Name Service, allowing domain names registration using «.ETH » extension.

Names’ registration in «.ETH »

The Ethereum Name Service, or ENS, corresponds to the Internet DNS, managed by ICANN, but unlike the latter, ENS is not based on root servers, but on the multitude of servers/machines, members of the Ethereum blockchain.

This is not a new registry having created another extension, but rather an alternative notion of the Internet.

Indeed, ENS is neither attached to the Global DNS, or to the IANA organization, nor to ICANN. ENS is a naming system specific to the Ethereum blockchain.

Domain name registration using «.ETH » is operating in a different way than classic domain name registration. This is a bidding system by anonymous deposit of a number of Ethers. In short, the name request opens a 72 hours period allowing other persons to bid. A second period of 48 hours then opens, during this period, each bidder must disclose their bid. The best bidder wins the name registration and is refund of their bid, minus the value corresponding to the difference of amounts between the two best bids. These funds are kept in a contract during 1 year minimum and can be removed at the end of this period, subject to release the name. If the name is the subject of one bid only, the bid’s winner is refund of the invested Ethers, except 0.01 Ether, corresponding to the minimum bid. This system should allow according to the ENS developers to prevent from speculation on domain names registration.

The system then doesn’t need an authority like ICANN, since the names ‘attribution is automated thanks to an IT program distributed and secured on the blockchain.

Nevertheless, if you type a domain name in «.ETH » in your browser search field, like Google Chrome, or Mozilla Firefox, an error page will be displayed. Indeed, the registered names in «.ETH » are not recognized by these browsers, since they aren’t part of the DNS network, they aren’t recognized as a domain name. Google Chrome extensions are proposed to create a bridge between the « web Ethereum » and the Internet that we know.

Hence, essentially, names currently registered in «.ETH » are only usable on the Ethereum blockchain, and therefore don’t affect the general public.

Lastly, the first use of ENS is, like the DNS, to allow the user to read and remember more easily an address by giving it a meaning. The DNS allows to translate an IP address in a legible address via the domain name.

Thus, ENS allows to translate an Ethereum user’s address (a user portfolio) of type «f14955b6f701a4bfd422dcc324cf1f4b5a466265 » in « myfirstname.eth ».

For example, when a user wishes to send Ether to another user, they only have to know their domain name and not their user address anymore. These domain names have a quite limited use, but may thereafter be used to access to future Ethereum applications.

The risks of the «.ETH » for brands owners

To this day, current web browsers don’t support these extensions, it seems that brands owners have no need to worry.

However, many French and international brands are « cybersquatted ». I.e. Ethereum users have won bids on brands names like « samsung.eth » or « volkswagen.eth ». They take over the name’s ownership for one year.

At the end of this first year of registration, the owners may release these names to retrieve the Ether stock associated to the name.

Risks should not be excluded in a near future if the «.ETH » are led to become more common and to offer interesting uses for the general public. Under this hypothesis, current web browsers could natively integrate «.ETH », in the same way as «.COM » or «.XYZ ».

Therefore, the owners of «.ETH » taking registered trademarks, for example may seek to benefit from this registration by using the reputation or identity of these protected brands, in order to divert the traffic to their own products or services. It may also be competitors seeking to tarnish their competitor’s brand image.

In the ICANN system, the rules enacted, in particular with UDRP procedures, propose to overcome these risks afterwards by allowing brands owners to try to recover a domain name using unjustly their brand. The restrictive nature of these rules, accepted and respected by registration offices, facilitates the application of the decision of Arbitration Center experts, and thus a domain name transfer to their rightful owner.

In the ENS system, there is no central authority which could enact these rules. Furthermore, domain names in «.ETH » have no real Whois file. To register such a domain name, they need to have Ethers and to create a portfolio. The identity is concealed behind a characters sequence, i.e. the digital impression of a cryptographic key. Therefore, it seems difficult to know the real identity of an owner in «.ETH ».

Furthermore, unlike the current system, it seems difficult to justify a territorial competence for «.ETH». The blockchain is not linked to any territory, it is distributed on all its members ‘machines, and thus all around the world.

The solution could eventually be developed by the Ethereum users themselves. It’s not to be excluded that an application is created in order to check the legitimacy of a domain name owner, on the basis of criteria defined in a program, like for example, the risk of confusion regarding a preexisting brand, and the good faith criteria in the use made of them. The constitution of a «popular jury » with voting materials would allow to decide on the issue as the result of a complaint from another member.

 

 

Trademark bullying? The Glencoe story

Trademark bullying? The Glencoe story

Glencoe is an “unforgettable place of dramatic mountains, rare beauty and haunting history” in the Scottish Highlands.

It is also a UK trademark, registered by several companies including The National Trust for Scotland. NTS’s 2016 trademark is registered for goods including beauty products, jewellery and clothing. A prior UK Glencoe mark protecting articles of clothing was registered in 1996 by Glenmuir Limited, a “family-run business dedicated to producing the finest golf wear” but it does not currently appear to be used on any articles of their clothing.

It is similarly the name that Hilltrek Outdoor Clothing gives to one of their hand crafted outdoor jackets.

 

The company, based in Aboyne, on the edge of the Highlands, has a 30 year history of manufacturing quality outdoor clothing. They have a long standing policy to name their jackets after some of their favourite places in Scotland. On the website you can find a link to a glossary providing information about the names and places used for their clothing.

Earlier this month Hilltrek owner Mr Shand received a cease & desist letter from NTS demanding they stop selling the Glencoe jacket. Mr Shand was surprised that a place name could be registered as a trademark. The Hilltrek website respects trademark rights, displaying the ® symbol next to several marks but not Glencoe.

The letter instructed Hilltrek to stop selling any goods bearing the name Glencoe immediately and refrain from using the name on any future products. Mr Shand published the letter that he found “bullying and threatening” on social media, saying that he would have understood and preferred a polite letter explaining the situation and asking for a dialogue.

This case raises serval interesting points for consideration.

Is it correct to register a place name to thereby blocking others from using it? NTS says that their aim is to protect the properties in their care and stop them being exploited. They encourage and support local business but have contacted a number of companies using trademarked names which are not local, including businesses based in France.

It is important to show tact when defending your IP rights in cases such as this. Reacting too harshly can result in this case with negative media attention for the complainant and great advertising opportunity for the “infringer”.

Which both underline the necessity of obtaining professional advice from an experienced IP Counsel whether you are defending a trademark or using one, even if you are not yet aware of it.

 

Mastodon : What about cybersquatting ?

Mastodon : What about cybersquatting

 

Communication on social media is the subject of many justified concerns from trademarks owners. As a matter of fact, user’s names creation, called “username”, are not legally protected beforehand. Specifically, the owner has to register or retrieve the username corresponding to their brand or demonstrate to the social media that the use of their brand is used with ill intent. In short, it’s a time consuming activity…

Mastodon, a few months old social network, trendy since a few days, is the subject of some articles regarding its nature, process and goal. But what about the associated brands protection?

Mastodon is a social network, created by Eugen Rochko, a 24 years old German developer. Twitter’s clone where characters are limited to 500, Mastodon is free, open source and not centralized. We will be interested in this last term. It’s possible to access Mastodon with its “basic official” website mastodon.social.

However mastodon.social is only an instance, you can use others like mastodon.fun developed in Angers. You choose a username for an instance and your complete username will be @username@instance. Keep in mind that instances are associable with each other, giving them a federal term.

Anyone can create an instance, so you have two cumulative possibilities:

  • Either you register your brand for all existing instances (today there are more than 2000 of them and it’s only the beginning).
  • Or you create your instance, closed, corresponding to your brand.

As you might have guessed, I will advise you the second choice: as it doesn’t exist any certification on Mastodon, anyone can be anybody. But by creating an instance corresponding to your principal domain name, you create this certification!

Of course .BRAND owners should create social.BRAND so they have a dedicated instance which allows them to highlight their TLD, like @pierre.dupont@social.brand.

If you need more information on Mastodon, don’t hesitate to contact us.

What is the appropriate way to deal with inappropriate content on the internet?

The internet is a great place to find content of all sorts. Videos of cats doing crazy stunts, memes, thought provoking lifestyle messages. But this rich availability means ease of access to a wide variety of inappropriate content.

Inappropriate content means any material that is disturbing, improper, and just wrong. It can be images of real or simulated violence or of a sexually explicit nature. Recently there have been concerns raised around disturbing YouTube videos. These strongly resemble videos of popular cartoons but contain disturbing and inappropriate content not suitable for children. In some cases the videos are parodies, some are clear cases of copyright infringement where unauthorised use is made of authentic cartoons or characters, most are simply not aimed at an audience of children.

So what is the best way to deal with cases that you discover?

Google and social media sites offer reporting tools highlighting inappropriate content and copyright or trademark infringement cases.

A copyright infringement submission is a legal process and only accepted from the right owner or their authorised agent.  But it is essential to consider if the content is being used fairly. Fair use generally covers adaptations of original works for the purpose of parody or comment. Parodic uses of copyrighted works are normally justified by freedom of expression but the key factor is that the public must be able to differentiate between the works. If the content is being used fairly then it is best to avoid submitting what might be considered a false claim and maybe even provoking further parodying activity. In summer 2015 the artist Banksy launched the clearly satirical Dismaland, an obvious play on words and “look and feel” of Disneyland, but Disney (sensibly) remained silent.

 

Dismaland

 

Inappropriate disturbing content should be flagged using the platform system. YouTube takes feedback very seriously and they appreciate people drawing attention to problematic content and make it easy for anyone to flag a video.  Flagged videos are manually reviewed 24/7 and any videos that don’t belong are removed within hours.  In addition they have a YouTube Kids app which helps limit access to flagged content.

Of course no filter is 100% accurate and nothing replaces vigilance. Careful monitoring can help ensure that your copyright protected content is not being used unfairly and allow you to submit takedown notices. But there is no product which can ever replace parental awareness.

 

YouTube

Alibaba’s use of technology to fight counterfeit reaps first rewards

In December 2016 Alibaba was placed on a US blacklist for fakes. A US industry watchdog called the company’s Taobao website (the world’s largest e-commerce platform) a “notorious” market for counterfeiting and piracy. Now Alibaba is diligently combatting this label. Via a program called Operation “Cloud Sword” big data technology such as advanced algorithms, machine learning, optical character recognition (OCR), and mapping technologies, is used to generate clues to help identify and take down fakes.

In January Alibaba sued two fake Swarovski watch sellers who allegedly link merchants with people willing to falsify purchases and write positive comments on its Taobao e-commerce platform for violations of goodwill and contract. The company claimed 1.4 million yuan, or about $201,000, in damages. Shenzhen police raided the seller and confiscated about 125 counterfeit watches after Alibaba’s claim. Alibaba used gathered and analysed data to identify the counterfeit Swarovski merchants and subsequently purchased a watch from the seller in a test-buy program.

Zheng Junfang, chief platform governance officer of Alibaba Group said. “We will bring the full force of the law to bear on these counterfeiters so as to deter others from engaging in this crime wherever they are.”

Sponsored Links – an opportunity and a threat to your brand

21666662780_27f0e79d81_bTitle : Adwords – Author : Christophe Benoit – Photo : licence CC BY 2.0 – www.tyseo.net

What is a “Sponsored Link”?

It’s a paid advertisement in the form of a hypertext link that shows up on search results pages. The ads are typically for products and services that are generally or very specifically related to the keywords in the search query.

The most well known sponsored links, Google Adwords, is an advertising service offered by Google for businesses wanting to display ads on the search engine and its advertising network. Businesses set a budget for advertising and pay when people click the ads.

Google Adwords, is an advertising service offered by Google for businesses wanting to display ads on the search engine and its advertising network.

What appears on your screen when you use an online search engine?

Results returned by a Search Engine typically fall into 2 categories:

  • Sponsored links (adwords): The customer bids on keywords and the advert (usually a small amount of text and a hyperlink) is displayed in a priority position, but only if the searched keywords match those that have been purchased by the advertiser.
  • Organic search listing: The results in this listing are based upon the relevance of the content on websites that have been referenced by the search engine being used.

On Google’s search results page, the two types of results are displayed differently

  • Sponsored links (adwords) are posted at the top of the list of results with the heading “AD”
  • Organic results are displayed in an order that depends upon how well they match the search query.

google_linksThe criteria taken into account by Google in order to display sponsored links are the same as organic listings in addition to taking into account the geographic location of the searcher.

Adwords can be purchased on a specific geographical area (a continent, country, region or city). Google uses the IP address of the computer on which the search request is being submitted to determine which sponsored results to return.

“Google designed Adwords to be a fully automated service that facilitates the selection of keywords and advert creation.”

Google’s Adwords service

The search engine that is targeted the most by unauthorised practices is Google that, for scalability reasons, designed Adwords to be a fully automated service that facilitates the selection of keywords and advert creation.

Given that, in the last quarter of 2014, sales of Google Adwords were estimated to be $10.50 bn on a net total revenue of $16.96 for the year, we can better understand the importance of this service.

Google is acting only to host the advert on its advertising network and therefore its responsibility is limited.

In order to avoid abuse, it is essential that the advert which appears after having typed a search term allows the normal internet user to know whether the Adword, which is promoting products or service, belongs to the brand owner, is a business linked to the brand or a third party organisation. It sits with the advertiser to choose one or more keywords, which determine when the advert is displayed. Therein lies the subtlety of Adword definition.

In this case, Google is acting only to host the advert on its advertising network and therefore its responsibility is limited with respect to inappropriate or adverts linking to counterfeit goods. Indeed, to determine the liability of a search engine, a judge must look at the degree of automation in order to determine whether the role of the operator   is neutral or not. If there is no control of stored data, liability of the search engine operator cannot be proven.

Various court rulings have declare that Google was not a counterfeiter despite proposing keywords, which reproduce distinctive marks (including registered trademarks) by storing and displaying adverts based on keywords. According to the courts, Google does not use these Keywords “in its own business communications”. That is to say, that Google makes keywords available to third parties but does not use that in its own publicity.

Court cases related to Adwords

With most Pay-Per-Click (PPC) programs on search engines, it is easy to buy competitors’ brand names as a keywords. For ethical reasons, this practice is not recommended. However, some less scrupulous companies do not hesitate.

Internet abuse, such as traffic diversion, cybersquatting, copycat website and counterfeiting products and services are still widespread on the Internet. However, on sponsored links, brand hijacking remains the most prevalent.

On sponsored links, brand hijacking and traffic diversion are the most common forms of abuse.

Brand hijacking can take two forms:

  • An advertiser buys a registered trademark as a keyword in order to have its adverts displayed when Internet users are searching for a particular brand
  • An advertiser places the brand in the text of its sponsored link advert which appears prominently on the search engine results page

These infractions have resulted in a number of well-publicised court cased where the definition of an Adword was recalled, such as:

These cases demonstrate the importance of the presentation of the advert so that it does not reproduce, in any way, a trademark registered by a third party in the Advert. In doing so it must not deceive the average consumer of the essential representation and functioning of the mark (as a function of its origin, as a function of its promotion, as a function of the investment in and reputation of the mark).

In the face of these very real threats, what steps should brand owners take?

It is essential that a brand owner files one or more trademarks for their brand. In order that proof of registration can be submitted in any complaint to the search engine or Advertising Network provider or in launching a legal action.

Recent court cases reinforce the importance of presenting an advert so that it does not reproduce, in any way, a third party registered trademark.

Reduction of brand risk is all about speed. It is as much about speed of detecting an infringement or fraudulent practice as it is about selecting the appropriate remedial action.

It is therefore important to actively monitor sponsored links for infringements rather than waiting to be made aware of an infringement by a disgruntled prospective customer who has purchased a counterfeit product in error.

Monitoring of Adwords should be a part of a multi-layered brand protection programme that is right for your business. Such a programme may include some or all of the following elements: Trademark monitoring, domain name monitoring, website discovery, search engine monitoring, content monitoring, sponsored link discovery, social network monitoring, and affiliate control.

Monitoring of Adwords should be a component in a multi-layered brand protection programme that is constructed for your particular business needs.

Building a brand protection programme that fits the needs and risk profile of the brand puts you in control of threats to your brand and allows you to respond with an appropriate level of rapidity and robustness.

If you have discovered a brand infringement on a Sponsored link network, it is important to know that it is possible to request that the hosting network remove adverts that misrepresent or use identical or near identical terms contained in a registered trademark. If your brand is suffering from widespread infringement and abuse such activities can be outsourced to specialist online brand protection which can handle as much or as little of the brand protection operation as the brand owner desires, from a simple detection service to a full suite of detection, analysis and enforcement capabilities.

Building a brand protection programme that fits the needs and risk profile of your brand puts you in control of threats to your brand and allows you to respond with an appropriate level of rapidity and robustness.

What has become of the big dreams of the big .BRANDs ?

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In 2012, ICANN received 643 applications for restricted use generic Top Level Domains extensions by brand owners. Recently, a surprising proportion of these, so called, .BRAND applications have been withdrawn, often resulting in the loss of the entire application fee ($185,000).

Why have these brand owners taken the decision to relinquish control over their very own piece of the Internet infrastructure? Is this a tactical response to a strategic direction or are they simply lacking the ideas and domain name registry experience to make the most of this investment? Jean-Francois Vanden Eynde, head of registry services at Nameshield investigates.

It is important to acclimatise the internet public to the use of the new .BRAND extensions since little has been done by ICANN to promote the overall new gTLD concept

The new generic Top Level Domain (gTLD) program has been a long time coming. And, from late 2013 onwards, new domain extensions have been live on the Internet, going largely unnoticed by the general public. At the time of writing, 548 new domain extensions have been delegated (the domain extension resolves in the root zone of the internet and is therefore live), only 96 of these are .BRAND applications, but these already include some well-known brands such as .cartier, .marriott, .nissan, .bnpparisbas and .bbc.

Note: When a domain extension is delegated it must immediately host a website on nic.extension (e.g. try typing nic.cartier or nic.marriott into the address bar of a web-browser).

Of the 643 .BRAND applications 56 have already been withdrawn by brand owners including some household names such as Amazon, General Motors (.chevy), Bloomingdales, Hasbro International Inc. (.transformers) and ProMark Brands Inc. (.Heinz and .Ketchup). It is expected that a greater number of .BRAND applicants will withdraw before the program reaches its conclusion, but what reasons do Brand owners have for turning their backs on an investment that runs into hundreds of thousands of dollars?

While, in the application phase, there was no shortage of experts offering to write a new gTLD application on behalf of a brand owner, those same experts seem to disappear when it comes to the implementation phase.

1. Competitive advantage mitigation

It was a well known fact, that often went unmentioned, that some brand owners applied for New gTLDs simply to ensure that their competition did not have a clear run at the domain extension and thereby gain competitive advantage.

If the completion does not apply and, despite being the applicant, you do not want to use the domain extension yourself, then an early withdrawal will reduce your losses and ensure that none of your competitors get to use the domain extension unless they apply for it in a future round. This type of strategy has been used by a number of brand owners in particular for generic terms.

2. Prevailing objections

During the application process, there was a period where those who had a grievance against an application could file an objection on one of four grounds. If the objector prevailed against the applicant then the application would have to be withdrawn.

For example, Ralph Lauren was forced to withdraw its application for .polo after an objection from the United States Polo Association, Inc. despite having well established trademarks for the term.

There are, in fact, very few people in the world who actually have the experience to implement and run a gTLD registry. This lack of know-how can make some companies revisit their original ‘green light’ decision.

They say that the only constant is change and its safe to say that nowadays corporations change their strategic direction and their personnel with alarming rapidity.

If key supporters of a company’s new gTLD program leave the business then it can quickly lead to the failure of a .BRAND particularly if this happens at the very top.

4. Lack of experience

One of the things that has become clear as the new gTLD program has unfolded is that, while in the application phase there was no shortage of experts offering to write a new gTLD application on behalf of a brand owner, those same experts seem to disappear when it comes to the implementation phase.

There are, in fact, very few people in the world who actually have the experience of implementing and running a gTLD registry. This lack of know-how can make some companies revisit their original decision.

5. Lack of need

Many .BRAND gTLDs will have been applied for defensive reasons without the brand owner considering the use to which a .BRAND new gTLD might be put. Since a new gTLD is really an intangible asset that involves a considerable on-going investment to maintain, it is understandable that some companies may reconsider the need for their own .BRAND gTLD.

6. Lack of ideas

For those of us that have worked in the domain name industry for a while, the idea of owning a piece of internet infrastructure to do with what you will has a considerable attraction. That is because Internet infrastructure is our business. For most brand owners, it is not. While there are few enough people on the planet that understand how to implement and run a gTLD registry, there are even fewer who know how to align a registry to support the needs of a single brand. Similarly, those who understand the needs of the brand usually do not fully understand how a .BRAND gTLD can help them realise corporate strategy.

What is noticeable by its absence is that to date very few of the .BRAND gTLDs, that have been delegated, are actually being used in anger in marketing messages, email or in fact online. The thing that will change this industry and bring us out of the .com era and into the “age of .anything” is for .BRAND tlds to actually start using their unique internet assets. Imagine what will happen when Nike starts using its .NIKE gTLD in television advertising or McDonalds starts putting its .MCD web-addresses on all of its collateral.

Before unleashing a new gTLD, brand owners must make sure that existing marketing campaigns, message infrastructure and website traffic and, above all, revenues are not adversely affected.

 

Less .haste more .speed

Unlike open registries, whose domain names are available to anyone, a .BRAND registry is under much less commercial pressure to launch. This is one of the principal reasons that the world is yet to see much movement in the .BRAND gTLD space. Another potential reason is that many .BRAND owners seem to view delegation as the end of something rather than the beginning of a new internet era for them.

Before unleashing a new gTLD, brand owners must make sure that existing marketing campaigns, message infrastructure and website traffic and, above all, revenues are not adversely affected. For a multinational brand there is a whole host of internal matters to address, including internal education programs, marketing style guides, email addresses and footers and effect on corporate culture.

Some brand owners may consider that this considerable upheaval is not worth the effort at this stage and may continue to use and promote their existing domain name infrastructure for some time to come.

However, brand owners should not dismiss, through lack of understanding, the long-term benefits that a new gTLD infrastructure can bring to their business. Certainly, careful consideration should be given to maximising the use, to which their new online intellectual property asset can be put.

 

It’s better to .Use it! don’t .Lose it!

What might brand owners do with their gTLD as soon as it’s delegated? There are a number of options that brand owners can choose to implement with their new domain extension such as:

1. Park it

Applicants who applied for defensive reasons will typically park their domain extension and register very few domains. This can be likened to purchasing an expensive Ferrari and leaving it in the garage. While this is a valid and understandable option, given the lack of available expertise within brand owners of operating Internet infrastructure, it does nothing to capitalise on a potential competitive advantage against competitors that have not applied for a new gTLD. For example, Nike successfully applied for .Nike whereas Adidas and Reebok chose not to apply. Nike now has a window of opportunity to exploit this competitive advantage.

2. Point it.

The very least a band owner should do is use this new and comparatively low cost Internet naming infrastructure to maximise traffic to its existing websites. Creating keyword domain names and forwarding the corresponding traffic to the brand owner’s main website costs little and may generate increased business and will certainly assist in search engine rankings.

3. Promote it

Some brand owners are already building their online corporate marketing strategy, if not their sales strategy, around their new .BRAND extension. They are using it to deliver important marketing messages about their values, culture and ethics to help reinforce the credibility of their brands. These informational pages can be placed on, what in .com terms would have been, premium domain names .

For example, Nike might host a website showing its strategy for environmental sustainability on sustainability.nike or ethically sourced products on fairtrade.nike or its focus on innovation and development on innovation.nike. If a brand owner wanted to do the same thing on the equivalent .com domain name they could be paying millions of dollars just for the domain name alone, if it was for sale at all. Using the equivalent .BRAND domain name should rank the site highly with the search engines and cost less than $5.

While no dates are set in stone for the opening of the next instalment of new gTLDs, brand owners and .BRAND owners alike should start preparing now.

It is important to acclimatise the internet public to the use of the new .BRAND extensions since little has been done to promote the overall new gTLD concept to the public. We saw elements of this recently at the Football world cup with McDonalds promoting www.mcd.com, which is only one step away from its .MCD extension.

Once the base elements of a new gTLD online strategy are in place, .BRAND owners should start focusing their Search Engine Optimisation (SEO) efforts and part of their Pay Per Click (PPC) budgets to their new domain extension. However, it is important to note that, while PPC can achieve rapid results it can consume large budgets and it is important that efforts to promote any new .BRAND extension should not get impede or add confusion to any existing online campaigns. SEO campaigns generally show gradual improvements over the space of 6 – 12 months, so it is important to start these campaigns as soon as possible.

While no dates are set in stone for the opening of the next instalment of new gTLDs, brand owners and .BRAND owners alike should start preparing now.

Those .BRAND owners who already have their gTLD delegated should not sit idle and let their competitive advantage disappear.

Brand owners who are considering applying in the next application round should start their planning now to ensure that when they finally get their gTLDs delegated they are ready to implement their marketing plans. And, brand owners who have no intention of applying for a new gTLD should still take stock because without a doubt this brand new namespace will affect their naming strategies, their domain name portfolios and their marketing messages.

Note: the original article, published in IPPRO magazine can be found here

Jean_Francois_Vanden_Eynde

Jean-Francois Vanden Eynde

Head of registry services

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