Thursday, May 31, 2018

Trademark Clearinghouse: latest stats

The Trademark Clearinghouse statistics for May 2018 have been released:
  • 44.155 trademark records submitted;
  • 117 countries covered;
  • 129 jurisdictions covered;
  • 169,265 trademark years;
  • 262,414 claims notifications;
  • 809,867 ongoing notifications;
  • 13,119 trademark records have expired.

Wednesday, May 30, 2018

New gTLDs: City vs Family name

When applying for a new gTLD, what happens if two applications for the extension are a city and a family name?

Which one wins?
Let's imagine that a person whose family name is "Marseille" applied for the .MARSEILLE new gTLD in the next round of the ICANN new gTLD program. What if there was a .MARSEILLE new gTLD too but as the name of the French city?

When the Family name is the name of a city
Even if the ICANN new gTLD applicant guidebook did not allow persons to submit an application in the first round, anyone could create a company using his or her family name and submit his application: this was perfectly legal and will probably remain like this in future rounds of the program.
Note that there is an existing case: it is known that one applicant applied for his first name and family name as a new domain name extension in the first round of the ICANN new gTLD program: it is the .RICHARDLI new gTLD.

Now: what happens when your family name is the name of a city?

"Marseille" is a famous French family name
A friend of mine's family name is "Marseille" and I wondered what would happen if he created a company named "Marseille" - or if he trademarked his family name like I did - and decided to submit a new gTLD application in the next round of the ICANN new gTLD program. Such an application could receive an objection from the French city of Marseille or he could object to the city's application too but - precisely - what could happen in such case of a conflicting geo/family application?

Some experts answered the question:
  1. John McCormac from HosterStats.com (the biggest domain and webhosting statistics site):
    "That's a legal question but I would think that the rights of the city could take precedence unless there is a lot of strong IP/TM rights supporting the family name application. The city may be able to object but there may be multiple cities sharing the same name with families. And then it may come down to which city is oldest. Think Paris, France versus Paris, Texas".
  2. Dirk Krischenowski from dotBERLIN GmbH & Co. KG (the .BERLIN registry):
    "If you apply the rules of the 2012 AGB (we don’t know to which extend the 2020 AGB may have changed in this respect) the answer for family names that match capital city names is clear: you need a letter of support or no-objection from the relevant city authority.
    If the applied-for family name is a city name but no one, even not ICANN’s geographic names panel, objects the application may go through smoothly. If you search at www.geonames.org for instance for Monash, Norton, Lancaster and many other .brand applications you will find names of municipalities with the same name. But all the applications were going through, the same of many generic term gTLD.
    And then there is a large grey zone where there had been not many cases (like .spa) where the city objected but was not found by ICANN to fall into the geographic names category.
    I hope I could give you guidance to you question."
  3. Roland LaPlante, Senior Vice President and Chief Marketing Officer Afilias (multiple registry for 20 new gTLDs):
    "The issue of geo-names such as city names is currently under active discussion in the Government Advisory Committee and other stakeholders in the ICANN community. I expect that, in the event of a conflict between an individual and a city, the city would win. This is because the city will usually have become the official owner of the name in some manner (e.g. in the ISO3166 list), and the official list trumps other claims. Further, if the city does not apply and the individual does, the individual must get permission from the city to proceed with the name."
I will add more answers when they come.

Thursday, May 24, 2018

The .ICU Sunrise Period ends

The .ICU new gTLD Sunrise Period ends today:
  • SUNRISE PERIOD END: Thursday, 24 May, 2018 - 14:00;
  • CLAIMS NOTIFICATION PERIOD START: Tuesday, 29 May, 2018;
  • CLAIMS NOTIFICATION PERIOD END: Thursday, 30 August, 2018.

More details are available on the TMCH Calendar.

Tuesday, May 22, 2018

New gTLDs, New Measures

This is a copy-paste of a recent 3 pages letter sent from the Brand Registry Group to the ICANN. You will find the link to download the original letter down this post. Potential .BRAND new gTLD applicants will certainly love its content.
The letter:

"At ICANN61 it was refreshing to hear from the variety of registry operators that have been working hard to make a success of their new gTLDs. In the Cross-Community session “A Walk in the Shoes of a New gTLD Registry Operator” the measures of success demonstrated by the 1 different registries were noticeably different to those of legacy TLDs, which often focus on a very narrow measure; the volume of domains under management.

Many of the new registries launched from the 2012 application round are not driven primarily, if at all, by the number of domain names they manage. Instead, they have a stronger focus towards registering domains for purposeful and positive needs. Examples covered during the ICANN61 cross-community sessions highlighted the following:
  • Brand TLD (dotBrand) registries do not have a revenue-based motive for operating a registry; it is a cost borne by the business to provide a stronger platform to manage their online presence, communications and business operations. It is a trusted space that is controlled and operated from the registry operator at the root of the Internet all the way through to delivery to Internet users.
  • Highly-restricted TLDs, such as .bank and .pharmacy, apply strict controls from verification of registrants through to higher standards of operation within the Top Level Domain environment, providing assurances to users and confidence that they are dealing with legitimate organisations. These communities self-regulate their registry, applying levels of controls far in excess of the minimal requirements you find in open, commercial TLD registries.
  • Geographic TLDs, particularly capital cities, such as dotBerlin, have developed TLDs with a strong sense of community and purpose, something shared by other generic-termed TLDs, such as .art and .design.
Zero-abuse
Importantly, we also heard how the ability to operate a registry with strict controls over who can register domains and how they can use the domains has a positive effect for Internet users by minimising abuse and confusion. Significantly, no domain name abuse or domain name infringements have occurred within dotBrand and highly-restricted registries, something that should not be overlooked or disregarded as a measure of success for New gTLDs.

This "zero-abuse” is an important factor for the domain industry as it moves into an active GDPR environment in May 2018. Concerns raised by governments, law enforcement, intellectual property protectors and security organisations, in the context of investigating and responding to domain abuse and infringements, become irrelevant where a registry operates without any abuse.

Quality not quantity
Domain names have long been treated as a commodity, providing low-cost and low-risk opportunities for acquiring domain names, absent of any need for a purpose or intention of use. Whilst many domains exist in legacy TLDs and ccTLDs are registered for a valid purpose and intent, they share rent with thousands of other domains that are registered with the desire to mislead, confuse or defraud Internet users. In response to these negative behaviours, volumes of domains have expanded, unsurprisingly, for protective purposes to counter trademark infringements and abuse across gTLD and ccTLD extensions.

Volume, therefore, is not necessarily a reasonable measure of success. Context and the scope of use is also an important factor.

A registry operated as a dotBrand may have a handful of domains registered but these could support a global organisation’s online business, communications and much more, serving millions of Internet users. A highly-restricted registry, such as .bank, may have a few hundred registrations, with verified registrants and stringent security controls associated with using a their .bank domains. Both examples are of registries that have a sense of purpose, a backbone, that ultimately provides safe and trusted environments for online users. They do not need high volumes of domain names to provide these benefits or to sustain their registry.

Long-term aims, not short-term gains
These successes highlighted in the cross-community session should not be a surprise, the intention of the New gTLD Program was to promote choice, competition and innovation. We are now witnessing the positive effect of these new registries that are performing effectively and with a sense of purpose. This is not by accident, but derived from long-term strategies and delivered with enthusiasm and commitment of these registry operators.

Regrettably, we often hear of complaints of the New gTLD program being slow to gain traction. But this ignores the introduction of different models, models that have different ambitions than simply replicating what we have seen before, models that compete in different ways, models that safeguard Internet users (not just registrants) and models that will unlock further innovation in the DNS.

Next opportunity for New gTLDs
Despite the promise of launching “subsequent gTLD application rounds as quickly as possible” after the 2012 round was launched and “within one year of the close of the application submission period”, there is no clear indication from ICANN when the next opportunity to apply will begin, with six years having already passed.

Organisations that did not apply in 2012 in the anticipation that they could apply 12-24 months after, have been misled by ICANN’s intent. Before risking further loss of faith from prospective applicants, ICANN should set a deadline for the next application window to start. ICANN should be more proactive in meeting its commitments and allow new applications to commence within a reasonable published timeframe.

Notwithstanding the incredible efforts of the community to conduct New gTLD reviews and policy improvement programs, six years is already a significant and embarrassing gap between application rounds, a gap that continues to grow. No doubt there are some complex issues involved, derived from the experiences of the 2012 round. However, for the majority of applications there were few or no issues, or those issues were resolved as part of the post-application process and prior to delegation. On this basis, it should be reasonable for ICANN to move forward and prepare for a new application round.

Even if ICANN limited the next round to certain types of applicants this would help ICANN to continue to promote choice, competition and innovation, following the years of delay. The criteria could, for example, be limited to the types of registries considered to be low in risk of domain abuse and infringements, thereby safeguarding users. In other words, these types of registries could be regarded as “in the public interest”.

However ICANN chooses to progress to the next round, the application window needs to be sooner rather than later. The demand exists but may wane if ICANN does not deliver on its commitment.

ICANN Budget & Reserves
Recognising the years of work that have already been consumed in relation to New gTLD reviews and policy development, it was alarming to hear that the ICANN budget drafted for FY19 was absent of any funding to support preliminary implementation work for the next application window, even though the GNSO Subsequent Procedures PDP work should be completed before the financial year concludes.

This oversight may have been caused by the budget constraints in response to runaway costs over the preceding few years that has affected the level of reserves, but it is also short-sighted. With demand for more TLDs, ICANN could drive forward the next application window in a reasonable timeframe, providing new revenue streams to support the organisation longer term. At the very least, this should be signalled by ICANN by way of anticipating implementation work to begin during FY19, along with a suitable budget.

A positive reflection, time to do more
The Brand Registry Group (BRG) hopes that you and your Board colleagues are encouraged by the examples of different New gTLD operators that were presented during the ICANN 61 crosscommunity session, and acknowledge their different perspectives of success. It is important that the Board is aware of these different models and how they can have a positive influence on the domain industry.

We also hope the Board can leverage these use cases and their benefits to be more confident in driving forward with the next application round. The continuing absence of a target date strongly indicates a lack of commitment and confidence from the Board to deliver against the intention of the Applicant Guidebook. To this point, the BRG would encourage the Board to take the initiative and set a target date for the community and potential applicants to work towards.

The BRG is aware of and continues to participate within various policy development activities to help improve the application process in future. We also appreciate that the next round requires planning and implementation work that will, in part, be directed or influenced by the outcome of these community work activities. Nevertheless, this should not prevent ICANN from planning and developing the implementation work based on previous practical experience, input from the community during the GNSO PDP Subsequent Procedures PDP, and, where necessary, predicting the likely outcome of these discussions. This should be supported with appropriate resources and budget and commence at the earliest opportunity.

The time to do more is long overdue."

Read the letter (PDF download)

Wednesday, May 16, 2018

New gTLD Innovation with .LIAISON

An exciting news in the world of dotBrand Registries with the .LIAISON new generic Top-Level Domains.

Authentic Web today announced a partnership with Liaison Technologies Inc. to develop the industry's first network security and compliance application, anchored on the trust authority and new control capabilities of Liaison's Brand Registry: .LIAISON

The new trust protocol technology developed by Authentic Web is designed to secure and protect data in motion on enterprise networks.

Over 550 global brands secured their own registry. This announcement describes a compelling use case for all businesses that rely on secure network server-to-server communications. As digital transformation initiatives expand the enterprise network surface area and as new data management regulations come into force, it has never been more urgent to ensure regulatory compliance and prioritize actions to protect your enterprise and customer data. Using a .BRAND Registry with the Authentic Web trust protocol is a step towards meeting these priorities. It's a valuable use-case supporting your company's decision to acquire your Brand Registry - and a reason to apply in the next round if you missed out.

Our joint press release with Liaison Technologies has more information.

Feel free to contact Authentic Web for more specifics.

Monday, May 14, 2018

The .LTD new gTLD enters the TOP 10

The .LTD new gTLD belongs to Donuts, an American company, and just entered the new gTLD TOP 10 in volumes with 468,462 domain names registered. This "explosion" started in May the 7 2018 and 417,815 of these domain names were recently registered at one single accredited registrar based...in China (source nTLDStats.com).


Something is going on
When such an important number of domain names are registered at the same time, it means that there is something going on...or maybe there was a fantastic communication campaign in China and all LTD companies decided to grab their ".ltd" domain name...but I doubt it. It is also possible that an investor decided to focus on this Top-Level Domain.

Just for the note
The "LTD" is the sign for Limited Companies (limited company). There is a .LTDA new gTLD too which was delegated in 2014. The registry says that ".LTDA domains are only available to companies which are recorded as Sociedad de Responsabilidad Limitada or Sociedade Limitada at the responsible authorities in Brazil and other Latin American countries".

When choosing a domain name, I strongly suggest to check that document first, it is the list of similar domain name extensions.

Friday, May 11, 2018

Why we're adding .APP to our new gTLD report

The "new gTLD reports" are monthly snapshots of new domain name registration volumes according to specific categories of businesses or groups and three of these reports are "special".

3 new gTLD reports are "indicators"
In our list of 17 reports, 3 are slightly different from the 14 others:
  1. The report related to Companies lists the gTLDs in which we believe a company should register its name or trademark with;
  2. The Singular VS Plural reports lists registration volumes but more important, it lists the TLDs that do exist in two versions: singular and plural (ie: ".accountant" and ".accountants";
  3. The Multiple Registries one is an indicator of volumes registered from a group to have acquired several domain name extensions.

Why we're adding .APP to our report for Companies
There are several reasons for this:
  • The cloud application market was valued at $ 52.605 billion in 2017 and is projected to expand at a compound annual growth rate of 14% over the forecast period to reach $115.71 billion by 2023. If numbers remain number, it still means that it is expanding fast. In more simple words, "apps" are adopted and chances are high that more companies either decide to point their website visitors to an application, or even create theirs;
  • Domain names ending in ".app" were massively registered during their General Availability Period and when this happens, the risk increases for a Trademark to have its name squatted; so $20/year to block this from happening is not a prohibitive investment;
  • It is multilingual: you say "app" to qualify an application is many languages worldwide;
  • It's a memorable TLD if you are in the application development business;
  • A SSL certificate is mandatory to use a ".app" domain name and SSL is a sign that security is increased on such a website: demonstration of security increases trust in a company;
  • It's cheap and when domain names are cheap, potential users tend to buy them more and install them;
  • It can be free: we acquired jovenet.app for free (for its first year of registration).
Companies are not concerned by all new extensions but a certain number them. The number one reason why we believe that .APP should be added to our list is that companies are coming to the use of applications and informing about it on a domain name ending in ".app" demonstrates innovation. Of course, application developers are more concerned by this statement.

A hidden reason
There's another hidden reason actually why we think that companies should secure their ".app" domain name...but this one...well, this is what we think: Google operates the .APP new gTLD and it is also a search engine; not "a" search engine actually but "the" search engine most of the world uses. Google decides what can be best indexed on its own platform. When informing about a content related to applications AND using a SSL certified website (recently advertised by Google to give a ranking boost to secure https/ssl websites), we think that using a ".app" domain name will rank better in search engine results.

The latest new gTLD report for Companies is available here.

Wednesday, May 9, 2018

The .APP has 150.000 registrations

The .APP new gTLD has passed the 150,000 domain name registrations just after a few days it entered its "GA" period.

The General Availability period
Known as "GA", this period is when a registry has ended all previous periods such as the Sunrise Period one, Landrush and/or other EAP periods (for Early Access Program).

The GA period is the most important one for a registry dedicated to selling domain names through the network of accredited registrar. It allows to see if the business model chosen to launch the extension was good or not. When registrants buy lots of domain names on the first days of GA, it can mean that the extension will meet adoption.


A little history
In the case of the .APP new gTLD, there is an historic background since the owner of the Registry is "Google" and the application was won in an auction for $25,001,000.00. These are the two first main reasons why the launching of this extension was followed by various parties.

Another reason is that it is short and memorable for application developers who will want to demonstrate precision when introducing their "app" on a website. Amazon offers the same kind of extensions for Bot developers with a .BOT new gTLD.

Also, the number of mobile-only Internet users now exceeds desktop-only in the U.S and what do you need on your mobile: apps.

The .APP Business model
The business model chosen here was to sell these domain names at an average price below $18 (more or less) at retail registrars like Uniregistry or Google Domains, with a renewal price close to $25 each year. It is important to note that a SSL certificate is mandatory to use a ".app" domain name.

With the SSL certificate, understand that the price of the certificate should be added to the price of the domain name and hosting...unless if you decide to use G Suite where the SSL certificate is "offered" when using the latest version of Google Sites.

My opinion
I am no application developer so I don't really need such domain names and I find that the price is a little high compared to other domain name extensions, I like the idea to force users to use a SSL certificate: with the general increase of online fraud, it makes sense to show a secure website introducing an application. Will application developers use a ".app" domain name? I think so because Google has a strong image and an impact on users.
I also just think that it makes sense for a company to introduce its application(s) using a ".app" domain name...because "app" is the word commonly used and understood for "application".

Wednesday, May 2, 2018

The April 2018 update: new gTLD reports

Once a month, new gTLD reports are updated: they allow to check which new domain name registration volumes increase or decrease in various categories of businesses. These numbers are a monthly snapshot of registries' performance. They can also be an indicator as if a new domain name extension is successful or not. Note that some of these extensions exist in their singular and plural version, they are indicated with a "(s/p)" sign. Trademarks are indicated with a "®" sign next to them.
  1. New gTLDs related to CATERING and RESTORATION
    (.restaurant - .kitchen - .bar - etc...)
  2. New gTLDs related to PHOTOGRAPHY
    (.photo - .film - .gallery - etc...)
  3. New gTLDs related to CITIES : these are city names only.
    (.paris - .london - .tokyo - etc...)
  4. New gTLDs related to COMPANIES : new domain name extensions that we believe a company should keep its eyes on.
  5. New gTLDs related to the LAW and LEGAL matters.
    (.legal - .attorney - .lawyer - etc...)
  6. New gTLDs related to FINANCE
    (.credit - .capital - .finance - etc...)
  7. New gTLDs related to a COLOR
    (.orange - .pink - .green - etc...)
  8. New gTLDs related to SPORT
    (.hockey - .basketball - .ski - etc...)
  9. New gTLDs related to ALCOHOL
    (.beer - .wine - .vodka - etc...)
  10. New gTLDs related to REAL ESTATE
    (.realestate - .realtor - .villas - etc...)
  11. Singular VS Plural versions of a new gTLD : these are domain name extensions which exist in their singular and plural version.
    (ie: .gift and .gifts)
  12. FRENCH new gTLD applications : these are applications submitted by French companies only.
  13. New gTLDs related to RELIGION
    (.catholic - .bible - .church - etc...)
  14. New gTLDs related to CARS
    (.taxi - .auto - .car - etc...)
  15. New gTLDs related to HEALTH
    (.health - .doctor - .hospital - etc...)
  16. New gTLDs related to ADULTS (no comment)
  17. Multiple Registries : group of Registries operating five (5) and more domain name extensions.

Register your Trademark using an agent.