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Legal Update

INTA Conducts Impact Study on Costs to Brand Owners of New gTLD Program

15 February 2017
Mayer Brown Legal Update

As the growth of the new generic top-level domain (gTLD) space has resulted in a corresponding need to adjust and broaden domain name enforcement strategies, many brand owners are concerned about potential increases in enforcement costs. To better quantify some of the effects of the new gTLD program on brand owners, the International Trademark Association (INTA) is conducting an impact study. Specifically, the survey asks brand owners about the costs of enforcing trademark rights under the Internet Corporation for Assigned Names and Numbers’ (ICANN) new gTLD program and is being conducted by Nielsen Consumer Insights, an external services provider, at the request of INTA’s Impact Studies and Internet Committees.

By way of background, in 2012, ICANN launched a program to allow organizations to apply to operate their own new gTLDs, the portion of an Internet domain name to the right of the “dot,” such as “.com.” Since late 2013, over 1,200 new gTLDs have been added to the Internet.

Any brand owners with an interest in the new gTLD program, and who are members of INTA, are encouraged to participate in the study by contacting for an individualized survey link. Organizations that are INTA corporate members may already have received individualized links from this email address.

While completing the survey will only take about 30 minutes, some preparatory work is required with regard to the costs of trademark enforcement relative to domain registrations. Information to be collected before taking the survey includes:

  • Number of domains registered under the “legacy” (e.g., .com, .net ) and “new” (e.g., .bank, .sucks) gTLDs in the past 24 months; 
  • Reasoning behind registering such domains and possible alternatives;
  • For organizations with trademarks recorded in the Trademark Clearinghouse, number of trademark claims notices received and estimated costs associated with these (both in-house and outside counsel); 
  • Estimated cost spent on general Internet monitoring of trademarks to identify potentially abusive or infringing domain names; 
  • Estimated cost spent on any of the following: cease and desist letters; UDRP proceedings; civil actions after adverse UDRP rulings; URS proceedings; ACPA lawsuits; and other trademark lawsuits resulting from a new gTLD;
  • Estimated cost spent on pursuing action against registrars and registries; and
  • Company policy on premium pricing for domain names.

Although the study was originally slated to close on February 3, 2017, it has been extended to close on February 28, 2017. We believe this is an important opportunity for brand owners to weigh in on the impact of the new gTLD program on their business and, particularly, to ensure that actual metrics are considered in evaluating this impact. The results of the survey will be shared with the ICANN Competition, Consumer Choice and Consumer Trust Review Team as well as with the New gTLD Subsequent Procedures Policy Development Process Working Group, which will be evaluating the 2012 new gTLD round and proposing policy and implementation recommendations for future rounds of new gTLDs.

Again, if your organization has an interest in domain name matters and is looking for a platform to express any concerns or observations about the new gTLD program before subsequent rounds of new gTLDs are launched, this is an excellent opportunity to do so. Please let us know if we can provide any additional information or be of any assistance to you in obtaining your survey link and/or completing the survey or if you would otherwise like to touch base regarding the new gTLD program at this important policy juncture.

Authors

  • Brian J. Winterfeldt
    T +1 202 263 3284
  • Michael D. Adams
    T +1 312 701 8713
  • Griffin M. Barnett
    Staff Attorney
    T +1 202 263 3289
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