Brand protection and monitoring for infringements are the 2 main ways brands are “using” new gTLDs according to the results of a recent survey of INTA members. The detailed survey was sent to 1,096 INTA regular members, and largely due to the work involved only 33 members responded.
So how are brands using new gTLDs? According to the 33 responding, “most brand owners are not purchasing new gTLDs with choice in mind. Rather, most brand owners have defensively registered new gTLDs to prevent infringement.” New gTLDs such as .sucks and .feedback, which are both aimed at customer gripes and feedback, haven’t been very popular among brands other than for preventing unauthorised third-party use. And even when registering domain names in the new gTLDs, they are parked after purchase. This, INTA says, “indicates a trend that brand owners are not using new gTLDs as alternate or more effective names for their businesses.”
The Sunrise periods have been popular, even if not well used, as they have “made it easier to acquire new gTLDs that match their marks.” But again, “most of these domain names are acquired and parked for defensive purposes and are not adding value for brand owners.”
Another issue for brand owners has been the volume of new gTLDs being launched. There are around 540 closed .brand new gTLDs meaning there are close to 700 new gTLDs that brands have to potentially monitor. With so many to monitor it’s difficult and expensive “for brands to implement any meaningful prophylactic defence strategy,” especially as many brands are forced to pay “premium” prices during Sunrise periods.
Brands though are monitoring bad actors registering domain names infringing on their brands through “traditional means, such as monitoring services, cease and desist letters, and Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings, as well the newly established trademark Rights Protection Mechanisms (RPMs), such as Uniform Rapid Suspension (URS) proceedings. In addition, some respondents have undertaken counter-confusion marketing efforts and internal training in response to the new gTLDs.”
Most respondents said “UDRP proceedings and the required Sunrise periods have helped to reduce the risks of new gTLDs to a ‘moderate’ extent.” But when attempting to contact these bad actors, brands are having challenges. Around three-quarters (75%) of the bad actors utilise a privacy or proxy service. Further, “nearly two thirds of attempted enforcement efforts against these domain names encountered some level of incorrect or incomplete WHOIS information.”
INTA claims its members spend $150,000 per year on defensive actions with internet monitoring and diversion actions the largest line item. Costs specific to new TLDs comprise about one seventh of the total and these costs are expected to grow over time.
One of the reasons given for introducing new gTLDs was choice – greater choice, competition and consumer trust. However for brand owners this hasn’t really worked out. Not so far at least. The main reason brands are registering domain names in the new gTLDs has been to “prevent infringement, rather than to diversify and make use of these domains.”
