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
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
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Mayer Brown article provides information and comments on legal
issues and developments of interest. The foregoing is not a
comprehensive treatment of the subject matter covered and is not
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