The International Trademark Association's (INTA) 135th Annual meeting in Dallas, Texas, wraps up today after five days of discussion among intellectual property leaders from around the globe – in fact, more than 8,000 of them.
It’s no surprise that one of the major topics on the minds of trademark owners was the impending launch of new gTLDs. After all, it's an issue that will impact all businesses. Trademark owners, whether or not they applied for a new gTLD, have to consider how much of their budget they are going to allocate to defensively registering domain names and which trademarks are most important to protect.
Six FairWinds staff members were on the ground in the Lone Star State, working to alleviate some of the burdens trademark owners will face as new gTLDs start going live. FairWinds staff recognized that many companies are still behind the curve when it comes to preparing for the massive gTLD expansion coming this year. Without a clear strategy for how to handle the rapid-fire open gTLD launches, a company could find itself exposed to dangerous trademark infringements, or overspending on value-less domains.
Many trademark owners who have applied for a gTLD face the added hurdle of ICANN's Registry Agreement (RA). Past gTLD launches have been largely limited to open, generic terms - .com, .edu, .org, .biz, .info – terms that have nothing to do with trademarks. But the draft Registry Agreement doesn't necessarily fit the business model of a trademarked gTLD name. For example, handing over the rights of a generic registry, in the event of that registry’s failure, is one thing. It’s an entirely different story if a .BRAND is asked to turn over the operation of its trademarked gTLD (e.g., .Safeway) on a site populated with trademarked material. The failure to differentiate between business models is just the sort of thing that makes trademark owners and trademark attorneys cringe.
FairWinds has written to ICANN about the need for a second draft Registry Agreement for what we refer to as Internal Registries (registries such as .BRANDs that do not plan to sell secondary level domains to the public). Gathering more support for a new Registry Agreement should make it more difficult to ignore.
This past weekend I took my children to see DreamWorks' The Croods and among the endless previews I focused my domain name radar on an ad for the upcoming sequel to Despicable Me and its advertised URL, Despicable.me.
It got me to thinking that soon, businesses of all kinds will be able to experiment with domain names in over 500 open new gTLDs (think Hunger.Games, Mr.Mom, Iron.Man, you get the idea).
Some studios have used top level country codes to create promotional websites that reflect the movie title. For example, Universal Studios registered "despicable" in Montenegro’s .ME when promoting Despicable Me in 2010. Universal Pictures still using the domain Despicable.me, where you can find trailers for the sequel.
Of course, not every movie title is so well suited to available extensions. Two years ago, FairWinds Partners looked at how film studios and their distribution partners use domain names to promote movies. Our study found there was little consistency or convention. Among others, we examined the nominees for the Academy Award for Best Picture, as well as the highest grossing movie for each year from 2000 to 2010. In total, only ten of the 72 movies in the study, or about 14 percent, advertised a Title.com address in promotional materials. The most commonly used alternative was TitleMovie.com. Several studios used the domain name of the production company that made the movie, rather than a domain that included the movie title in some form.
With the launch of about 550 open, generic new .WORDS starting in 2013, studios are presented with enormous creative promotional possibilities. Pairing the list of applications with the list of upcoming movie launches, we could see domain names such as TheBig.Wedding, or Sin.City that could be a site for the original Sin City movie and promote the sequel: Sin City: A Dame to Kill For. How cool would it be to see an action flick title ending in .NINJA, or a nature film with a domain ending in .ECO? If the .MOVIE and .FILM applications move forward, there is no limit to what the tech-savvy studios could do.
New York-based startup Artsy has garnered attention from the media and investors for its Pandora-esque artwork discovery engine, but now issues with its Syrian domain name are causing the company problems. In the midst of the violent conflict in Syria, the company's principle domain name has suffered outages, and on Friday, Artsy announced plans to move operations to Artsy.net.
Founder Carter Cleveland had to endure a lengthy legal and governmental struggle to use the .SY extension, the country code assigned to Syria, to begin with. As detailed by TechCrunch, Cleveland was represented by a Syrian law firm in the country to help him deal with changing regulations and red tape from abroad.
In a press release issued Friday, Artsy explains that the company initially chose Art.sy, "because it is the shortest spellable English language domain that begins with the word 'art.'" The catchy name and simple domain name attracted media attention and helped grow the Artsy brand.
Now, however, Artsy might suffer from having chosen a domain name that was better for branding than operations. The Syrian extension brought Artsy significant attention, but it ultimately proved unreliable. With hundreds of new gTLDs on the horizon this year, reliability will be paramount. New gTLDs will present unprecedented domain name branding opportunities, but that is ultimately moot if they aren't stable.
Interestingly, Artsy.com is currently listed for sale by Domain Brokers, and it seems that it would be a wise investment for a company by the same name that exists solely online, especially after having to shutter Art.sy. Compete data shows that Art.sy hit a high of approximately 21,000 unique visitors in October, while Artsy.net is not even listed on the site. Artsy.com it should be noted, pulled just over 1,500 unique visitors in November, significant for a parked page.
For now, it appears that Artsy will exist solely on Artsy.net, but it will be interesting to see if the company ever purchases Artsy.com. How this situation will affect Artsy's traffic and business, if at all, remains to be seen, but it should at least drive some new traffic to Artsy.net.
Today, FairWinds Managing Partner Josh Bourne published a cover article for iMedia Connection. The article, titled “Your Step-by-Step Guide to Acquiring a gTLD” walks applicants through all the phases of applying for and acquiring a new gTLD – from the initial fact gathering and planning; to preparing the best application possible; to launching a new gTLD registry and making the most of the ongoing relationship with ICANN. Josh also breaks down what applicants need to be thinking about and what questions they need to be asking throughout the new gTLD launch process. This article is a must-read for anyone considering pursuing a new gTLD.
During a recent interview with City A.M., former Chair of the ICANN Board of Directors Peter Dengate Thrush, who joined Top Level Domain Holdings in July after retiring from the ICANN Board, stated that the current domain name market is worth about $12 billion.
It is unclear exactly what Dengate Thrush was measuring in this estimation: whether he was referring to the value of the marketplace of companies that provide services to domain name registrants (registries, registrars, SEO service providers, advertisers, etc.), or to the marketable value of all domain names. At present, there are hundreds of millions of domain names across both generic (gTLDs) and country-code top level domains (ccTLDs).
What’s curious, however, is that Dengate Thrush made this assertion in the context of discussing new generic top-level domains (gTLDs). He believes that the domain name market will expand by around $3 to $4 billion with the introduction of new gTLDs. ICANN has predicted that the new gTLD program will launch hundreds of new domain extensions – compare that to the 22 existing gTLDs and approximately 240 existing ccTLDs. When these figures are taken into consideration, Dengate Thrush is basically predicting that the value of the marketplace will increase by only 25 to 30 percent, while the real estate in the gTLD marketplace will increase from anywhere from 2,000 to 5,000 percent, according to some estimates. In that context, his estimations could be interpreted as a lack of confidence in the future value of new gTLDs, or, more likely, a lack of empirical data supporting his assertions.
The point I’m trying to make here is that I wouldn’t put too much stock in these assertions. It will be years before we can know with any certainty what kind of impact the new gTLD program will have on the domain name marketplace. One thing is certain, though: that impact is likely to be dramatic.
Today, I’m heading off to London for a whirlwind three-day business trip. I’ll be attending a total of 15 meetings while I’m here, and I’m very much looking forward to seeing clients as well as some other business friends. Throughout this summer, we’ve been finding that many people are keenly interested in how FairWinds is working with companies to deal with new gTLDs, and how CADNA is working to improve Internet governance and promote policies that benefit both companies and Internet users, as well as promote cybersecurity.
I’m also really eager to see one of my good friends from college, who also happened to be a member of my wedding party. He’s been living in London with his wife and two children while on assignment for Goldman Sachs. I’m very happy to have been invited to his daughter’s second birthday party today. His sister flew in from Dubai and his parents traveled up from Greece for the occasion.
The forecast is calling for sunshine and a gorgeous 70 degrees – something we haven’t seen for months in Washington – for the party today. This should be a fantastic transition to the next few days in London.
As reported by Forbes and other outlets, Web.com will be acquiring domain name registrar Network Solutions for $405 million in cash, plus 18 million shares of common stock, valued at around $155 million.
This acquisition should help Web.com, parent company of Register.com, compete with GoDaddy, which was acquired by a group of private equity firms led by KKR & Co. and Silver Lake Partners last year in a deal worth $2.25 billion. Network Solutions is majority-owned by General Atlantic, another private equity firm, and after the acquisition, General Atlantic and other Network Solutions shareholders will own 37 percent of Web.com.
Network Solutions will bring its two million retail customers, hundreds of thousands of wholesale customers and over six million domains to Web.com. Register.com and Network Solutions are two of the oldest and highest priced registrars in existence.
This development, along with Go Daddy's acquisition, could signal a trend of consolidation in the domain name industry in anticipation of the potential explosion of activity in the domain name space as a result of ICANN's June 20 approval of the New gTLD Program.
Yesterday I attended the Internet Governance Forum USA (IGF-USA), hosted at the Georgetown University Law Center here in Washington, DC. Specifically, I went to sit in on an afternoon workshop titled “Changing Landscape of the Domain Name System: New gTLDs and their Implications for Users: Opportunities and Risks.”
The IGF-USA is the U.S. branch of the broader IGF, a multi-stakeholder organization that was formed to support the United Nations Secretary-General in carrying out the mandate from the World Summit on the Information Society that it convene a forum for various parties to discuss policy. The IGF does not set policy, but provides discussion that can serve as fodder for policy makers, many of whom participate in IGF forums.
The IGF provides a summary of the Changing Landscape of the Domain Name System workshop, along with the list of panelists who led the discussion, here. In addition to those listed, Jamie Hedlund, ICANN’s Vice President, Government Affairs, also participated. As I mentioned before, the IGF cannot actually set policy, and in the case, the workshop dealt with a policy that is already in place. So at times, when audience members expressed trepidation or even disagreement with aspects of the new gTLD program, there was a sense that it was falling on deaf ears.
One audience member raised the question of whether the “rush” for new gTLDs could mirror the .COM bubble and its subsequent burst. Hedlund responded that whether new gTLDs survive is not the point, but that the point of the program is to increase competition. I then asked what will happen when a new, open-registry gTLD (like .MUSIC or .ECO) fails, as so many of the panelists had indicated will likely happen – some will inevitably fail. He answered by explaining that each new gTLD registry must demonstrate that it is financially stable enough to continue operations for three years in the event that it fails, during which time ICANN will find another party to take over the gTLD. However, the exchange ended there; Hedlund never broached the issue of what would happen when certain gTLD registries end up being a bad investment an no party wants to take them over. How long can gTLDs like .FOOD or .BOISE last if no one wants to run them?
I don’t doubt that the IGF has positively influenced policy since its establishment in 2006. However, in the case of new gTLDs, yesterday’s workshop seemed to only confirm what many have expected for some time: that ICANN followed its own agenda with the New gTLD Program, diverting only very briefly to listen to outside advice.
This week, I wrote an article for Forbes.com about what retail brands need to know about new gTLDs. All brands will have to adapt their digital strategies to the new gTLD space, but global retail brands will face particular challenges and opportunities.
For retail brands, perhaps more so than other industries, the branding implications of being “left behind” and seeming out of date if they do not adopt new gTLDs could be significant. If they stick to their .COM addresses, they could risk appearing “so 1999” as compared to their competitors who begin using branded gTLDs. Since ICANN will not publish the list of applications until after the application round closes, retail brands will have to take a gamble, and for many, the safe bet will be to assume that their competitors are, in fact, applying.
But on a brighter note, new gTLDs could offer interesting marketing opportunities for retail brands. Take back to school shopping as an example. Right now, most top-level domain equity lies in .COM, and there can only be one BackToSchool.com. In the new gTLD space, we could see addresses like BackToSchool.Target and BackToSchool.OldNavy, which could redirect to Target and Old Navy’s back to school sale pages.
On the subject of redirects, in most cases retail brands (and all brands) should not attempt to fully transition content to new gTLD domain names right away. They have made significant investments into optimizing their current sites to rank highly in search engine results, so until we know how search engine algorithms will account for new domains, brand owners should consider redirecting new domains to their existing .COM URLs.
New top-level domains will present online retailers with unique and unprecedented opportunities and challenges over the next few years. But the first and most crucial step that all brand owners must take between now and the opening of the application period is to gather facts and take the time to really explore whether or not applying for a new domain will be advantageous for their business.