Goldstein Report

Tag: International Trademark Association

  • Brand gTLDs Beating to a Different Drum: INTA Meeting

    Brand gTLDs Beating to a Different Drum: INTA Meeting

    International Trademark Association logoThe pressures on brands to get their new gTLDs to market are different to those with registrations that rely on paid for registrations. For brands, the pressure is to get what they want… right.

    At the International Trademark Association (INTA) Annual Meeting in Barcelona, Spain, that’s running from 20 to 24 May, there was a discussion on how to evaluate the success of brand generic top level domains. It’s a huge even for trademark professionals with the number registered this year topping 10,644 at 17:00 pm on Sunday, 21 May.

    World Trademark Review has given a detailed coverage of the meeting, including the seminar on brand gTLDs. CSC Digital Brand Services’ Gretchen Olive argued, according to the WTR report, “that they should be viewed through a different prism. Crucially, she notes that ‘.brands’ are just not in a rush to launch. Nor are they subject to the same pressures to do so, in a bid to recoup their investment through registration sales: ‘Success is not measured by registrations or profit, but instead the unique strategic business goals of each individual brand.’”

    “The operators of branded online spaces, then, are marching to the beat of a different drum. One such is Accenture, with Kristen Poggensee, paralegal associate manager, joining Olive in the ‘.brands’ and you’ session. Poggensee is part of a cross-company team – drawing on legal, marketing and IT – that is driving the digital strategy behind ‘.accenture’, and she explained: ‘Right now we are not looking to just switch from ‘.com’ to ‘.accenture’. Instead we are taking a phased approach and testing the water. This is an evolving strategy.’ Central to this are continued efforts to ‘build awareness – not only within the company but also the community’, engage in industry and competitor analysis, and ensure that senior management remains involved in the project as this evolution continues: ‘You have to keep interest levels high.’ The takeaway? There may not be a big bang moment in terms of ‘.brand’ deployment but don’t regard that as indicating failure. Brand registries are instead working at their own pace, exploring and testing different options, and rolling out only when it is strategically advantageous to do so.”

  • INTA Members Discuss New gTLD Experiences – The Good, the Bad and the Ugly!

    INTA Members Discuss New gTLD Experiences – The Good, the Bad and the Ugly!

    International Trademark Association logoBrand owners have mixed views on the introduction of new gTLDs with some seeing them as an opportunity “to provide reassurance to customers”, concerns over how to deal with defensive registrations, uncertainty with how to use brand gTLDs and an interest in future application rounds.

    These were some of the views expressed by corporate practitioners from a number of countries representing a range of industries who took part in two In-House Idea Exchange teleconferences on “gTLDs: One Year Later,” presented by INTA’s In-House Practitioners Committee.

    For brands that applied for their own gTLDs, “some … reasoned that the .brand TLD could be used to provide reassurance to customers that they are at the official site and to protect against phishing.” But not all companies “have definite plans for the use of the .brand TLDs, but viewed the .brand TLDs as an opportunity with potential benefit that they did not want to miss.” And for those that did not apply, the main reasons given by teleconference participants was the high cost of the application and lack of relevancy of domain names due to greater use of search engines and apps.

    Brand owners seemed to question the relevance of domain names and thought there were only a few of the new gTLDs they would consider registering domains in. “Many participants stated that their companies had to scale back their strategies regarding defensive domain name registration in light of the tremendous increased cost of defensive registration across so many domains.”

    A few examples of how companies were dealing with new gTLDs were given. One company said they “used to employ an extensive defensive strategy, which included registering spelling variants and typographical errors, [but they are] now only registering the exact trademark.” Others are “limiting their defensive registrations to new gTLDs that had some relationship to their products or services. Others reported registering domains defensively in all of the new gTLDs. Many companies are using the Domain Protected Marks List (DPML) offered by Donuts Inc., to prevent others from registering domains corresponding to key brands across numerous gTLD registries. A number of participants complained that signing up for the DPML block for a particular mark seemed to increase the likelihood that the domain would be treated as ‘premium’ in individual registries and subject to higher registration fees. In addition, participants complained that in a few cases where they wanted to register a domain covered by the DPML block, they had to pay a fee to remove the block in addition to the high domain name registration fees.”

    As would be expected among brand owners, the controversial .sucks gTLD was a topic of discussion. “Some companies applied to register their key brands in the .sucks registry, citing concerns that upper management would not be happy if a criticism site was launched under the .sucks TLD for their brand. Other companies did not apply, reasoning that they viewed the cost of registration as unreasonably high, and it is easy to register other variants of the domain. Several participants mentioned a recent National Public Radio (NPR) interview with INTA President J. Scott Evans, speaking in his capacity as Associate General Counsel at Adobe Systems, in which he called the .sucks domain an ‘extortion scheme’ and suggested that ‘the best way not to get included is not to suck.’”

    On Sunrise periods, most participants said they “used sunrise registrations for registrations that they viewed as most important, and some participants stated that they registered domains through the regular process where the registration was a less important one.”

    And when looking ahead to possible future application rounds, the participants said they were interested while the teleconference moderators “urged brand owners to get involved in ICANN’s Business Constituency, which has fewer than 50 members, so that they can provide input and influence ICANN’s policies.”

  • INTA Supports US Congress’ gTLD Concerns

    INTA Supports US Congress’ gTLD Concerns

    International Trademark Association logoThe International Trademark Association (INTA) has expressed their support for concerns raised by key members of the US Congress regarding ICANN’s plan for new gTLDs who wrote to the organisation outlining concerns that any new strings introduced will not harm trademark holders and requesting assurance the public will have adequate opportunity to comment.

    The letter from the chairman and ranking member of both the Senate and House judiciary committees asked ICANN to provide them “with further details about the steps ICANN is taking to fulfil its commitment to ensure that the New gTLD process will provide ‘a secure, stable marketplace’ with input from ‘the community as a whole.’”

    INTA agrees that ICANN must implement stronger trademark protection mechanisms. Without them, brand owners will be forced to devote a substantial amount of resources to defending their trademarks and protecting their customers, since there will be more opportunities for criminals to harm consumers, which includes misleading online shoppers into purchasing dangerous counterfeit products.

    The International Trademark Association (INTA) is a worldwide association of member companies and firms that support and advance trademarks and intellectual property as elements of global commerce.

  • Minds + Machines Announce New gTLD Initiative

    Minds + Machines Announce New gTLD Initiative

    Minds + Machines, one of many offering services for new generic Top Level Domains (gTLDs), is expected to announce it will offer a package of services for as low as $25,000 that will include everything from application to operation of a gTLD according to a Domain Incite report.

    Minds + Machines, according to an announcement on their blog that is sans prices – these are expected to be announced at the International Trademark Association (INTA) conference in Washington DC this week – outlines its services saying they will be able to handle everyting from application to operation.

    The conditions for the possible $25,000 package are not yet available, but expect more information soon.

  • Trademark Holders Demand Flesh and Blood on New gTLDs

    Trademark representatives never give up. They are like a dog with a bone, and the only time they are silent is if they have their way 100 per cent.Originally decrying ICANN’s proposal of new gTLDs as the end of the world, the International Trademark Association (INTA) seems to now accept they will happen. But INTA continues to wrestle with the gTLD bone in ensuring that when they are introduced, they have their way with trademark protection.The latest salvo from INTA is a letter to Peter Dengate Thrush and Rod Beckstrom, ICANN’s chair and CEO/president respectively, saying they support “ICANN’s identification of trademark protection and an analysis of economic impact as two of the overarching issues that must be resolved before any new gTLDs are introduced.”INTA believes “the resolution of these overarching issues is central to the objective of ensuring consumers are adequately protected and registrants and internet users are not disparately impacted by the introduction of new gTLDs.”The letter goes on to say INTA “applaud[s] the recommendation set forth in ICANN’s recently commissioned economic report, ‘An Economic Framework for the Analysis of the Expansion of Generic Top-Level Domain Names,’ to conduct a study to assess the harms associated with intellectual property abuse and related forms of consumer fraud in the domain name system, including how the current gTLDs have affected intellectual property and consumers since their introduction. Indeed trademark owners believe that such a study is not only a sensible recommendation, but an essential prerequisite before any rollout of new gTLDs.”INTA kindly offers to assist ICANN “with the preparation and completion of such a study”. No doubt it never occurred to them that they would like to ensure their views were taken into account!However ICANN seem to be saying that the IP lawyers have had their say, with Dengate Thrush saying at the recent Internet Governance Forum in Vilnius that they:
    have had their chance to make all of their cases in their five-year process and the intellectual property protection brought in place is with a delicate balance with everyone in the community not just with IP lawyers IP lawyers always want more protection IP lawyers always want their brands to be stronger I’m one myself I’m a specialist IP lawyer. What we have had to do is balance the interest of the IP lawyers against all of the other constituencies free speech if you don’t want these things people who say that each of the brands in TLDs do not equate to brands that there are other elements and other values. So there’s a lot of debate that’s gone into this it’s not just simply somebody saying: Let’s do it over. Let’s do everything in a hurry it’s taken five years and resolved with a lot of compromised discussions of which the IP lawyers have been a huge part so just some comments from me.The letter to ICANN from Heather Steinmeyer, President of the International Trademark Association is on the ICANN website at:
    icann.org/correspondence/steinmeyer-to-dengate-thrush-08sep10-en.pdfThe transcript of the “NewgGTLDs and IDNs for Development Importance and Obstacles” session at the IGF in Vilnius is available from:
    www.intgovforum.org/cms/component/content/article/102-transcripts2010/634-61

  • ICANN's New gTLD Pre-Registration Opposed by INTA

    ICANN's New gTLD Pre-Registration Opposed by INTA

    The International Trademark Association (INTA), a not-for-profit membership association of 5,900 trademark owners, professionals and academics, from more than 190 countries, emailed its members on 11 January to suggest they support their opposition to ICANN’s proposed expressions of interest (EOI) process. (more…)