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Are new gTLD registries ripping off brands with unfair sunrise fees?

Kevin Murphy, June 5, 2015, 09:48:56 (UTC), Domain Registries

Forget .sucks — several less controversial new gTLD registries have come under fire from the likes of Google, Facebook and Adobe for charging sunrise fees as high as $17,000 for domains matching famous trademarks.
According to figures supplied to DI by ICANN’s Business Constituency, the domain instagram.love carries a $17,610 “Premium Name Fee” during the current sunrise period.
Instagram is of course the photo sharing service belonging to Facebook, and to the best of my knowledge not a dictionary word.
The domain facebook.love has a $8,930 fee, these figures show, while google.love costs $6,610, both in addition to sunrise fees of $350 and annual fees of $60.
The regular sunrise fee for .love comes in at $265 at some registrars.
The new gTLDs .design, .video, .wang, .wein, .rich and .top also seem to carry very high fees for brands such as Facebook, according to the BC’s numbers.
Google recently filed a public comment with ICANN which warned:

some registry operators are taking advantage of rights owners during Sunrise by charging exorbitant and extortionate Sunrise registration fees. Although such pricing policies are not strictly within the ICANN compliance mandate, they contravene the spirit of the RPMs [rights protection mechanisms], damage ICANN’s reputation, harm consumers in contravention of ICANN’s mandate to promote the public interest, and create disincentives for rights owners to take advantage of the Sunrise period

Similar comments were sent by the Intellectual Property Constituency, BC, and others.
The issue of registries charging super-high “premium” fees for trademarked names has been on the radar of the BC and the IPC since at least 2013.
It seems that in at least some cases, trademark owners are being hit with the higher fees because their marks are dictionary words that the registry has identified as premium due to their regular meaning.
For example, adobe.design is on the list of names provided by the BC, carrying a $1,175 registration fee.
But Andrew Merriam, director of business development at .design registry Top Level Design, denied that the software company is being targeted. Instead, he said “adobe” refers to the material used in architecture — its dictionary meaning.
He said: “Stucco.design, concrete.design, wood.design, granite.design (and many other materials and building styles) are all on the premium list, at varying prices. In fact, adobe.design is priced on the lower end of all these materials.”
Merriam said the registry’s premium fee for adobe.design is actually $250 and speculated that $1,175 could be the price quoted by Adobe’s brand protection registrar post-markup. It was $349 at Go Daddy, he said.
In other cases, trademarks may have found their way on to premium lists due to a lack of manual vetting by the registry, rather than nefarious targeting.
In the case of instagram.love, Evatt Merchant of .love registry Merchant Law Group told DI that Facebook can buy the name for the normal sunrise fee if it wants.
He told DI that trademark owners should contact the registry if they believe their marks have been wrongly given premium prices. He said:

While it is possible that some brand terms that are frequently googled have ended up on the premium list, valued based on their Google search frequency, there is a simple solution. During the sunrise period, brands seeking non-dictionary trademarked domain names can contact the registry so that a review of individual sunrise pricing can occur. As has already occurred, such requests will often result in the .LOVE TLD voluntarily offering to reduce their sunrise application cost to the base sunrise price and that would certainly be the case for Instagram.

ICANN’s does not regulate pricing in new gTLDs, but nevertheless the IPC and BC and their members have asked ICANN to include premium pricing of trademarked names in its upcoming review of rights protection mechanisms.

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Comments (7)

  1. R P says:
    June 5, 2015 at 12:16 pm

    Not saying I disagree, but isn’t this the kettle calling the pot black?
    Google makes a fortune off of other companies marks (ie allowing competitors to bid up the cost of their own trademark keyword) and Facebook encouraged companies to pay to gain followers to their FB pages only to basically cutoff free communication shortly afterwards.
    .sucks is a bit different because of the very negative connotation which could potentially harm the brand.
    But the rest of these new Gs seem to be just following in the footsteps of the online advertising giants

    Reply
  2. BnP says:
    June 5, 2015 at 2:15 pm

    I have an idea . . . if you have a validated trademark and an SMD file issued by the TMCH, you shouldn’t have to pay an extra fee because the mark in question is allegedly a “premium” term based on some metric like frequency of search, etc. Isn’t this the deal the various interests struck when they created the TMCH and guaranteed Sunrise Periods in each gTLD? It’s one thing to charge extraordinarily high fees to all TM owners during sunrise, but the charge some a different fee than others based on some “premium” pretext seems contrary to the intent of the community and the spirit of the RPM’s implemented by ICANN.

    Reply
    • Rubens Kuhl says:
      June 8, 2015 at 3:48 pm

      Note that there are a lot of generic terms in TMCH, and different pricing is the only sure way to avoid such terms from being taken. The fact that one registry used it to get more money from known brands doesn’t change that other registries had to fight this problem.

      Reply
    • John Berryhill says:
      June 8, 2015 at 8:38 pm

      Oh, but it is not contrary to the intent of the community to engage in pretexts such as obtaining trademarks on dictionary words in no-examination jurisdictions, claiming the marks are for “pens”, and putting up a fake “pens for sale” website as “proof of use”?
      It’s not contrary to the intent of the community for companies like 1-800-FLOWERS to get a Tunisian trademark registration for the word “flowers”?
      It’s not contrary to the intent of the community for the TMCH to include entries for the textual component of graphical marks, even when the textual component is disclaimed?
      The TMCH is a joke.

      Reply
  3. Eric Lyon says:
    June 5, 2015 at 6:08 pm

    I can’t wrap my head around the topic without feeling that some leverage is being used to take advantage of existing brands, forcing them to pay inflated premium rates to protect them self.

    Reply
  4. Richard Funden says:
    June 8, 2015 at 8:29 am

    Let them! Big Brands have been ripping off customers for ages with their elevated prices justified only by their brand. About time they get a taste of their own medicine…

    Reply
  5. Brand fail says:
    June 8, 2015 at 11:57 pm

    meh.. Brands forced changes to the already agreed to RPMs. They’ve repeatedly convinced ICANN to insert further protections into registry operations where none existed. This approach has benefited brand protection companies, but not the brands themselves nor the registries who’ve had to scramble to add new functionality to their systems.
    So I’m not particularly sympathetic if some registries pass on the operational cost of new functionality, or the opportunity cost of an initially restricted sales channel.
    moral of the story: if you add a whole bunch of new requirements for self benefit, that others have to pay to implement, don’t be shocked when someone passes you the bill

    Reply

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