Looking Back on 2014: gTLDs

2014 was a year for ICANN to take stock, deliberate, and realize significant progress in its management of new gTLDs. Delegation did not take place at the rate that ICANN had predicted, but instead, the organization worked through key milestones and developments of its own process and the New gTLD Program.

Before we transition into 2015, here is a look at the past 12 months and some of the key themes and developments of 2014.

ICANN’s Recognition of .BRAND gTLDs

Since the opening of the New gTLD Application period in early 2012, those familiar with the program distinguished between more traditional gTLDs, where second-level registrations are open to third parties (like .COM), and gTLDs matching trademark terms operated by strategic companies (.BRANDs).

In the latter, the gTLD would be controlled by the applying brand and registrations in the gTLD would be limited to the corporate applicant and affiliated parties, rather than allowing registrations by third parties. However, ICANN never allowed for or made a formal distinction between these types of applications or gTLDs.

In March of this year, the ICANN Board approved Specification 13, which added provisions to the Registry Agreement for qualifying .BRAND gTLDs. Specification 13 provides intellectual property protections and grants exemptions from certain obligations included in the Registry Agreement for qualifying Registry Operators.

ICANN set a high bar to qualify for Specification 13 and also set registration restrictions within the .BRAND; however, it was the first time ICANN made an official distinction between gTLDs open to third party usage and gTLDs used by strategic enterprises to support brands and trademarks.

While only a minority of Specification 13 .BRANDs have been delegated to date and Specification 13 is limited in nature, Specification 13 created a formal distinction and status for .BRANDs within the New gTLD Program.

The Globalization of ICANN

ICANN began its effort to globalize in 2013 with the opening of Engagement Centers around the world and the establishment of three operational hubs. However, these efforts were taken to another level when the U.S. Commerce Department’s National Telecommunications and Information Administration (NTIA) announced its intention to transition the Internet Assigned Numbers Authority (IANA) functions away from the United States to the global multi-stakeholder community. This thrust ICANN into the global spotlight and into the forefront of Internet Governance discussions.

The current expiration date for the NTIA’s IANA functions is September 30, 2015 and many believe the U.S. government will renew this contract for at least an additional year. Despite this, the March announcement has resulted in a flurry of work both inside and outside of ICANN to develop a proposal that would transition this current responsibility of the U.S. Department of Commerce away from the NTIA.

Since March, ICANN and other affected bodies have worked to develop and implement their own processes and mechanisms to develop a transition plan to be reviewed and approved by the U.S. government. While we will need to wait until 2015 to see the finalization of these proposals and potentially, the implementation of this transition plan in the fourth quarter of 2015, a lot of the groundwork has been completed during the past year.

With Globalization, A Focus on ICANN’s Accountability

With the transition announcement in March, efforts have begun to enhance the accountability of ICANN and to ensure its accountability moving forward. This new focus arose out of concern regarding ICANN’s accountability after the U.S. government ends its contractual relationship with ICANN as early as September of 2015. While framework has been set within ICANN for these efforts, it will not be until 2015 or even later for some of the elements being examined that we see the outcome and implementation of this community-wide effort.

The Launch of gTLDs

While close to 75 gTLDs were delegated in 2013 and Registry Agreements were executed for over 200, only eight gTLDs opened their Sunrise periods and only one gTLD began its Landrush period in 2013. No gTLDs had entered General Availability at the beginning of 2014.

As of December 15, 2014:

  • There are over 3.5 million registrations in New gTLDs
  • Over 300 gTLDs are accepting registrations by third parties
  • Over 460 gTLDs have been delegated
  • Over 650 Registry Agreements have been executed

In 2014, we saw numerous gTLDs such as .CLUB and .NYC leverage the Qualified Launch Program and launch marketing campaigns to bring attention and drive registrations and usage within their respective gTLDs. We saw brands like .AXA and .MONASH register their first domains.

While we will likely not see all Registry Agreements executed until 2016 and gTLD delegations completed until 2017, 2014 was the year gTLDs were brought to market.

Looking Ahead

While 2014 may not have been as dramatic of a year for the New gTLD Program and ICANN as previous years, 2014 saw the gTLD Program hit some key milestones with the launch of hundreds of gTLDs and over 3 million registrations in new gTLDs. ICANN also received international attention and scrutiny related to Internet Governance that has not and is not expected to dissipate anytime soon.

While many of the key developments in 2015 will depend on the activities related to the NTIA transition and the progress of new gTLDs, below are some key thematic developments we expect in 2015.

  • NTIA Transition of the IANA Functions: While most expect that the NTIA will renew the contract set to expire in September, the Department of Commerce will need to take definitive action one way or the other by September 2015.
  • New gTLD Application Round Reviews: While a second gTLD round is not anticipated to begin until late 2016 at the earliest, a number of the requisite reviews are targeted for 2015, including the Rights Protection Mechanisms (RPM) Review, the independent review of the Trademark Clearinghouse, the Root Stability study, and others.
  • Progression of .BRAND gTLDs: Given that almost all .BRANDs have a contracting deadline of July 29, 2015, we can expect all .BRANDs that are not on hold to execute the Registry Agreement by mid-2015.
  • Resolution of Contention Sets: While there are still outstanding Community Priority Evaluations (CPE) in progress and some contention sets are still on hold due to accountability proceedings, all active contention sets are scheduled to be resolved by March 2015.

The Changing Landscape of Brand Protection in 2014

As 2014 draws to a close, I look back on the monumental changes that have happened in the domain name space and in brand protection over the past year.

At this time last year, the general public was still limited to registering in top-level domains such as .com, .net, and .info, as well as a handful of country-code domains.

Now, there’s been an explosion of new extensions, and we can register in new .GENERIC TLDs such as .guru, .clothing, .plumbing, and, one of my personal favorites, .bike.  Of course, there are also many .BRAND TLDs now such as .BMW, .AXA, and .BLOOMBERG, just to name a few, but these will mostly be closed and only available to their respective trademark owners.

As expected, this expansion of domain possibilities has brought with it an expansion in the scope of cybersquatting, which brands have had to consider in their brand protection efforts.

Brand Protection through Dispute Resolution

We’ve already seen hundreds of UDRP and URS cases pursuing infringements in new TLDs.  Examples include:

  • StateFarm.xyz (still pending)
  • Inifinity.today (suspended)
  • IKEA.trade (ordered transferred)
  • Branson.guru (claim denied)

Brand Protection through Defensive Registration

Many brand owners have felt the need to jump into the more popular new TLDs – not because they have big plans for them, but merely as a defensive move to prevent them from falling into the hands of cybersquatters.

Brand Protection at a Steep Cost

Defensive registration hasn’t been painless for brand owners.  Many have found that the words making up their brands have been priced higher than usual as “premium” domains.

Registries can do this where a brand is capable of having generic meaning in addition to functioning as a trademark (e.g., “apple” in relation to fruit vs. high tech gadgets).  Given the alternative of even more expensive litigation with questionable chances for success, brand owners have opted to pay these premium prices and so the practice has gone on quietly.

More Options and Regulations

Another odd facet of new gTLDs is that not all registrars offer all domains.  In some cases (e.g., .moscow) there are a limited number of registrars offering the domain and so brand owners may not be able to benefit from the relationship they’ve developed with their favored registrar and may find themselves agreeing to be bound by the laws of countries with which they’re not all that familiar.

Contending with Geographic Restrictions

Finally, some new gTLDs have geographic restrictions and brand owners without an office or address in that location may find themselves shut out of the domain.  The much-promoted .nyc domain is a prime example where only registrants having an address within the five boroughs of New York City are eligible to own these domains.  Brand owners without such an address may either need to be creative in finding a local agent to hold the domain for them or may simply be faced with using the URS process to shut down the infringing [brand].nyc when it inevitably gets registered by an ambitious local entrepreneur (as has already happened in a number of instances).

So it seems that, in addition to policing their marks online, brand owners must also deal with a patchwork of issues when seeking to defensively register domains.  Don’t be surprised if, in the new year, this leads to some responsibility for these tasks being removed from catch-all personnel in IT or legal departments and the creation of new in-house specialist positions titled “Domain Name Manager” or the like.

.GEO Domain Names – A New Tool in Local Online Marketing

shutterstock_143902213Young consumers, especially Millennials, use technology to represent and identify with location, whether by using apps that provide location-specific search results and allow customers to become the “mayor” of a business, or by tagging their present location when posting to Facebook or Instagram.

Businesses can use domain names as another tool to capitalize on the draw of geography: .GEO generic top-level domains (gTLDs) such as .NYC or .LONDON may help businesses, government agencies, and citizens to improve their local online marketing campaigns.

The Growing Appeal of .GEO Domain Names for Local Online Marketing

With 451 new gTLDs now live, .GEO domains are already gaining strong market share. Extensions like .BERLIN, .TOKYO and .LONDON have found themselves among the Top 25 new gTLDs based on total number of domains registered (as of this writing).

GoDaddy has even launched an interactive map where consumers can search domain names based upon geographical location (http://geo.godaddy.com), which may continue to present .GEO domains as appealing options for entrepreneurs and local enthusiasts.

Using a .GEO Doman Name to Improve Local Online Marketing – Some Examples

Being a Bostonian is much more than geography: It’s an identity. It’s being a die-hard sports fan and being “wicked smaht.”

It makes sense, then, for businesses looking to attract Bostonians to harness the enthusiasm for that identity in their local online marketing efforts. And for that, businesses have the option of using .BOSTON.

The Boston Globe applied for the .BOSTON gTLD with the hope to become the central registry for businesses that wish to broadcast their Bostonian identity. Now, businesses can be proud to embody their city’s spirit and show that pride by using a .BOSTON domain name.

Another example, half a world away, is ZA Central Registry. ZA Central Registry, which previously managed .CO.ZA, is expanding to include gTLDs such as .AFRICA, .CAPETOWN, .JOBURG, and .DURBAN.

The goal for .AFRICA on a much larger geographic scale: .AFRICA aims to showcase cities in Africa as ideal tourist destinations and utilize this opportunity for growth and development within Africa.

In both cases, though, a .GEO gTLD is being used to foster and communicate a strong geographic identity that can strengthen a business’ ties with consumers.

What is the Risk of Not Having a .GEO Domain Name?

In a word, cybersquatting.

While gTLDs such as .BOSTON and .AFRICA hope to be a boon for their geographic locations, scammers are already buying up .GEO domain names containing brands in order to take advantage of Internet users. At best, scammers will just put up ads to make money off of the traffic that may come to the site, and at worst, they can set up phishing schemes that can put consumers in harm’s way or harmful content that can damage a brand’s reputation.

Should Your Business Consider a .GEO Domain Name?

.GEO domains do not make sense for all businesses – there are few local online marketing tools, if any, which are one-size fits all. However, it’s important for businesses to consider the marketing and brand-protection benefits a .GEO offers, whether they are small, local businesses or larger corporations.

Domain names are 21st-century real estate with the same attachment that one feels toward a physical “home” or “hometown” to that of a “homepage.” Think about whether a .GEO domain will speak to your authenticity and make your consumers feel welcome and secure.

Why Are You Making Me Do All This Extra Work?

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For UDRP Panelists, some cases are very straightforward and obvious and it takes very little time to draft a decision. However, every once in a while, along comes a case which should be very straightforward and obvious, but one of the parties just doesn’t quite see it that way.

And so it is with a recent dispute over the domain name zionsbank.xyz. The Complainant is a well-known financial institution based in Salt Lake City, Utah and has used its registered trademark since the early 1990s. The Respondent, based in Perth, Australia, resolves the domain name to a pay-per-click (PPC) website with links to various financial institutions, some of which are competitors of the Complainant. Despite his geographic remoteness from Utah, the Respondent does not claim that he has never heard of Zions Bank but, instead, heaps upon the Panel a wide and creative range of defenses, most of which flirt with basic principles of trademark law but ultimately show a refusal to accept the reality of the situation.

The Respondent claims that: the Complainant’s trademark doesn’t include the letters “xyz”; the domain name differs from the Complainant’s mark since it is all in lower-case letters; the word “Zion” has descriptive meaning such as being both a biblical and geographic reference; many other trademarks incorporating the word Zion have been used for centuries; and the Complainant cannot know the Respondent’s true intentions for the disputed domain name.

In what should have been a simple decision consisting of a couple of paragraphs for each of the three UDRP elements, the Panel felt compelled to address each of the Respondent’s contentions and knock them down one at a time. On the question of confusing similarity, the Panel pointed out that the case of the letters in a domain name is irrelevant, that use of the .xyz top-level domain does not reduce confusion with the well-known Zions Bank brand, and the existence of other third-party Zion trademarks has no impact since the first UDRP element is a mere threshold question and only the domain name and the Complainant’s trademark need be compared.

Next, as to whether the Respondent has any rights or legitimate interest in the domain name, the fact that the domain name resolves to PPC links to other financial institutions precludes the creation of such rights or interest. Further, the Respondent’s claim to have unrealized plans and intentions for the domain name cannot be taken seriously where the Respondent has not seen fit to disclose the details of those plans, let alone supply evidence to support them.

Finally, although the word Zion has some descriptive meaning, the Respondent chose to follow it with the word “bank” and provided no reason for the Panel to think that this combined term could identify anyone other than the Complainant. He also addressed the Respondent’s argument that none of the PPC links at the zionsbank.xyz website directly refer to the Complainant, but dismissed this claim by holding that the Respondent created “initial interest confusion” with the Zions Bank mark (visitors may not realize, until after they’ve seen the website, that there is no connection to the Complainant, but might still click on one of the links and earn revenue for the Respondent).

Ultimately, after likely taking a couple of hours to consider and draft a decision that should have taken 30 minutes, the Panel ordered that the domain name be transferred to Complainant. One could look at this as giving the Respondent its due process and allowing it to submit any defense it so desired. And while I’m a huge fan of due process, there’s a part of me that feels this resulted in nothing but a lot of wasted time and energy for all concerned.

The Top 5 Things to Consider When Applying for a .BRAND

ICANN recently announced that it may open a second round of the New gTLD Program as early as late 2016.

While 2016 still sounds pretty far away, companies that are considering applying for a .BRAND or .GENERIC should begin assessing its value soon in order to allow enough time to make an informed decision.

Here are five things to consider when analyzing the value of a new gTLD for your company:



1. Who in your Industry has a new gTLD? 

Do some research and learn who in your Industry applied for a new gTLD in the 1st round of applications.

If a lot of companies from your industry applied for their own .BRAND or .GENERIC in the 1st round, you should evaluate the risks of staying out of the next application round.

Even if no brands in your industry applied for a new gTLD, or very few of them did, applying for one in the 2nd round would be an opportunity to innovate within your industry.

Also ask yourself:

  • What other new gTLDs are already out there?
  • How are they being used?
  • Do they draw in Internet users or show up in search?

Looking at .BRANDs and .GENERICs in this way will provide insight into the possibilities for new gTLDs and the potential future use and importance of gTLDs within your industry.


2. Will a .BRAND or .GENERIC support your current and future branding and marketing goals?

Examine your Digital Analytics.

  • Are your online metrics showing any current gaps in success that could be improved by getting and using your own gTLDs?

Examine your Target Audiences.

  • Can a new gTLD help you better cater to some or all of your audiences?


3. Can a .BRAND help with your online security goals?

A .BRAND can provide an added level of security online and increase consumer trust. This can be crucial to:

  • Highly-Regulated Industries
    Companies such as financial services, may migrate to their .BRAND gTLD since it provides a more secure space for consumer interaction.
  • E-Commerce
    Similarly, for companies selling products and services online, a .BRAND gTLD provides a more secure space for online payment.


4. Can a new gTLD help your Current Domain Portfolio?

A new gTLD can help solve domain ownership gaps and assist with online brand protection. Specifically in one of these areas:

  • Domain Ownership Gaps
    New gTLDs provide the opportunity to own any term to the left of the dot, whereas those same terms are probably already snapped up in .COM.
  • Brand Protection/Infringement
    If your company experiences a lot of trademark infringement in the domain space, you could use a .BRAND to communicate to consumers that the content within your gTLD is legitimate and trustworthy.


5.  Are you prepared for the new gTLD application process and fulfilling the requirements of owning and using a .BRAND or .GENERIC?

When applying for a gTLD, there are tactical, procedural, and cost requirements associated with the application process. In addition, there are responsibilities related to running a gTLD registry.

  • Application Process
    In order to apply for a gTLD, the applicant must be able to show it has the technical and financial capabilities to operate a new gTLD. This usually includes partnering with third-parties that can provide required services.
  • Requirements for Running a gTLD Registry
    Owning a gTLD requires on-going compliance with ICANN’s terms and policies. Examples include monthly reporting on registry functions, registration requirements (especially for .BRANDs), and dispute resolution procedures.

Analyzing these five areas will allow you to make an educated decision on whether owning a new gTLD is right for your company.