Brand kills off gTLD that is actually being USED

Two more companies have told ICANN they’ve changed their minds about running a dot-brand gTLD, including the first example of a TLD that is actually in use.
Dun & Bradstreet has said it no longer wishes to launch .duns, and Australian insurance company iSelect has had enough of .iselect.
Both companies filed to voluntarily terminate their ICANN registry agreements in March, and ICANN published its preliminary decision to allow them to do so this week.
While business data provider D&B never got around to using .duns, .iselect has had dozens of active domains for years.
The company started putting domains in its zone file about three years ago and had over 90 registered names at the last count, with about a dozen indexed by Google. That’s a quite a lot for a dot-brand.
It is using domains such as home.iselect, news.iselect and careers.iselect as redirects to parts of its main corporate site, while domains such as gas.iselect, creditcards.iselect and health.iselect send customers to specific product pages.
They all redirect to its main iselect.com.au site. There are no web sites as far as I can tell that keep visitors in the .iselect realm.
I’m pretty certain this is the first example of a voluntary contract termination by a dot-brand that is actually in active use.
There have been 52 such terminations to date, including these two latest ones, almost all of which have been dot-brands that never got out of the barn door.
That’s over 10% of the dot-brands that were delegated from the 2012 gTLD application round.

Smaller registrars say .uk release is biased towards the Big Boys

A group of small .uk registrars have complained to Nominet that the imminent release of three million second-level .uk domain names is biased towards their deep-pocketed rivals.
So far, 33 registrars have signed a petition, penned by Netistrar’s Andrew Bennett, against Nominet’s rules.
On July 1, the registry plans to start releasing .uk 2LDs that are currently reserved under its five-year-long grandfathering program.
These are domains that match existing third-level domains in .co.uk, .org.uk, etc.
The 3LD registrants have until 0500 UTC on June 25 to claim their 2LD matches. A week later, Nominet will start releasing them in alphabetical batches of 600,000 per day, over five days, to the available pool.
It’s going to be a little like “the drop” in gTLDs such as .com, with registrars all vying to pick up the most-valuable names as soon as they are released.
In the gTLD space, each registrar is given an equal number of connections, which is why drop-catch specialists such as SnapNames own hundreds of registrar accreditations.
Nominet’s doing it a little different, instead throttling connections based on how much credit registrars have with the registry, which the petitioners believe rigs the system towards the registrars with the most money.
According to the Nominet, registrars with £450 of credit get six connections per minute, rising to nine per minute for those with £4,500, 60 per minute for £45,000 and, at the top end, 150 per minute for registrars with £90,000 stashed in the Bank of Nominet.
Larger registrars with multiple Nominet accreditations, known as “tags” in the .uk space, will be able to stack their connections for an even greater chance at grabbing the best names.
Registrars such as GoDaddy are already taking pre-orders and will auction off the domains they catch to the highest bidder, if there are multiple pre-orders for the same names, so there’s potentially a fair bit of money to be made.
The small registrars say these credit-based rules are “disproportionately unfair” to their business models.
They point out that it doesn’t make much sense to rate-limit connections based on their proven ability to pay, given that there’s no link between how many they plan to register in the crucial first minute after the drop and how many they intend to register overall.
Nominet says on its web site that the tiers as described are provisional and will be firmed up the week of June 24.
The petitioners are also bothered that Nominet has not made any EPP code available to help the smaller guys, which have fewer engineering resources, to adjust to this temporary, time-sensitive registration system, and that the release plan was not communicated well to registrars.
They further claim that Nominet has not conducted enough outreach to .uk registrants to let them know their grandfathered rights will soon expire.
Many well-known brands have yet to claim their trademark.uk names, they claim.
Nominet has previously told DI that it planned to advertise the end of grandfathering in the press and on radio in the run-up to the release.

These 27 companies have ditched the .com for their dot-brand

Earlier today, I listed what I believe might be the top 10 dot-brand gTLDs with the most active web sites, but noted that it was probably a rubbish way to gauge the success of the dot-brand concept.
As a follow-up, I thought I’d figure out which brands have taken the bold step of ditching the .com and made their dot-brand their primary web destination.
I found 27 TLDs, which is simultaneously not a lot and easily twice as many as I was expecting.
The most-popular second-level string was “home”, with 12 examples. The string “global” occurs five times on the list.
I did this research manually with Google and a list of 275 dot-brands — anything with Spec 13 in its contract and more than two domains in its zone file — culled from my database.
To get on this list, at least one of the following had to be true:

• The dot-brand was the top hit on Google when searching for the brand in question.
• The .com redirects to the dot-brand.

Sometimes I had to factor out Google’s enormously irritating habit of localizing results, which would prioritize a .uk domain, particularly in the case of automotive brands.
On a few occasions, if I could not be certain whether the “official” primary site was in a ccTLD or the dot-brand, I used the brand’s Wikipedia page as a tie-breaker.
Some entries on the list may be a bit debatable.
I’m not sure whether .barclays should be there, for example. There’s little doubt in my mind that barclays.co.uk is the site that the majority of Barclays’ banking customers use, but barclays.com redirects visitors to home.barclays, so it fits my criteria.
In general, I’ve erred on the side of caution. If the top search result was for the brand’s .com, it was immediately ruled out, no matter how enthusiastic a dot-brand user the company otherwise appeared to be.
Here’s the list. Please let me know if you think I’ve missed any.
[table id=57 /]
Twenty-seven gTLDs is not a great many, of course, considering that some dot-brands have been delegated for half a decade already.
It’s about half as many as have already torn up their ICANN registry agreements, and it represents less than 6% of the new gTLDs that my database says have Spec 13 in their contracts.
But I reiterate that this is not a list of companies using their dot-brands but rather of those apparently putting their .com firmly in the back seat to their dot-brand.

These are the 10 most-used dot-brands

This article was deleted October 1, 2019 after numerous errors were discovered.

EURid inks trademark protection deal for non-trademark owners

.eu registry EURid is partnering on an alerts service for would-be trademark owners.
The company this week announced a deal with the EU Intellectual Property Office that will see applicants for European trademarks being able to receive alerts if and when somebody else registers the .eu domain matching their desired mark.
EURid said in a statement:

Some people have taken advantage of early publication of EUTM applications and registered the EUTM as a .eu domain name in bad faith. Effectively reducing the risk of such cyber-squatting infringements requires adopting preventive actions such as raising awareness and pro-actively informing the EUTM holders.
As of 18 May, holders and applicants of a EUTM can opt-in to receive alerts as soon as a .eu domain name is registered that is identical to their EUTM (application). By receiving such alert, EUTM holders are informed much faster and may take appropriate action much sooner.

It sounds a little like the Trademark Claims service new gTLD registries are obliged to offer during their launch, but for companies that not not yet actually own the trademarks concerned.
Offered by EUIPO itself, the service is also available to holders of EU trademarks.

Got a spare three grand? For a limited period, you can buy a .th domain name

The Thailand ccTLD registry’s unusual, and unusually expensive, approach to selling second-level domains has seen .th open up for another limited-period application window.
Until June 30, anyone can pay THNIC Foundation a THB 10,000 ($313) fee to “apply for” a 2LD.
Each application will be manually reviewed, and successful registrants will be notified July 8.
But be warned: the fee for the first year and subsequent annual renewals is an eye-watering THB 100,000 ($3,130).
Trademark owners and owners of matching .co.th domains will get priority in the event of clashes with regular would-be registrants.
THNIC has been using this strange approach to second-level domain allocation — which looks more like a series of sunrise periods that never culminate in general availability — in sporadic, brief rounds for the last five years.
Most ccTLD registries with a legacy three-level structure — such as .uk, .jp and .nz — have opted to instead make 2LDs available in much the same way as 3LDs.

Brand-blocking service plotted for porn gTLDs

MMX wants to offer a new service for trademark owners worried about cybersquatting in its four porn-themed gTLDs.
The proposed Adult Block Services would be similar to Donuts’ groundbreaking Domain Protected Marks List and the recent Trademark Sentry offering from .CLUB Domains.
The service would enable big brands to block their marks from registration across all four TLDs for less than the price of individual defensive registrations.
Prices have not been disclosed, but a more-expensive “Plus” version would also allow the blocking of variants such as typos. The registry told ICANN:

The Adult Block Services will be offered as a chance for trademark owners to quickly and easily make labels unavailable for registration in our TLDs. For those trademark owners registering domain names as a defensive measure only, the Adult Block Services offer an easy, definitive, and cost-effective method for achieving their goals by offering at-a-stroke protection for TLDs included in the program. The Adult Block Services are similar to the Donuts’ DPML, Uniregistry’s EP and EP Plus and the .Club UNBS and should be immediately understood and accepted by the trademark community.
The Adult Block will allow trademark owners to block unregistered labels in our TLDs that directly match their trademarks. The Adult Block Plus will allow trademark owners to block unregistered, confusingly similar variations of their trademarks in our TLDs.

It seems more akin to DPML, and Uniregistry’s recently launched clone, than to .CLUB’s forthcoming single-TLD offering.
The Registry Service Evaluation Process request was filed by ICM Registry, which was acquired by MMX last year.
It only covers the four porn gTLDs that ICM originally ran, and not any of the other 22 gTLDs managed by MMX (aka Minds + Machines).
This will certainly make the service appear less attractive to the IP community than something like DPML, which covers Donuts stable of 242 TLDs.
While there’s no public data about how successful blocking services have been, anecdotally I’m told they’re quite popular.
What we do have data on is how popular the ICM gTLDs have been in sunrise periods, where trademark owners showed up in higher-than-usual numbers to defensively register their marks.
.porn, .adult and .sex garnered about 2,000 sunrise regs each, more than 20 times the average for a new gTLD, making them three of the top four most-subscribed sunrise periods.
Almost one in five of the currently registered domains in each of these TLDs is likely to be a sunrise defensive.
Now that sunrise is long gone, there may be an appetite in the trademark community for less-expensive blocks.
But there have been calls for the industry to unify and offer blocking services to cover all gTLDs.
The brand-protection registrar Com Laude recently wrote:

What brands really need is for registry operators to come together and offer a universal, truly global block that applies across all the open registries and at a reasonable price that a trademark owner with multiple brands can afford.

Quite how that would happen across over 1,200 gTLDs is a bit of a mystery, unless ICANN forced such a service upon them.

ICANN to host first-ever high-stakes dot-brand auction

Two companies that own trademark rights to the same brand are to fight it out at an ICANN auction for the first time.
Germany-based Merck Group will fight it out for .merck with American rival Merck & Co at an auction scheduled to take place July 17.
Because it’s an ICANN “last-resort” auction, the value of the winning bid will be disclosed and all the money will flow to ICANN.
It will be the first ICANN gTLD auction for three years, when a Verisign proxy agreed to pay $135 million for .web.
The two Mercks could still avoid the ICANN auction by resolving their contention set privately.
The German Merck is a chemicals company founded in 1668 (not a typo) and the US Merck was founded as its subsidiary in the late 19th century.
That division was seized by the US government during World War I and subsequently became independent.
The German company uses merckgroup.com as its primary domain today. The US firm, which with 2018 revenue of over $42 billion is by far the larger company, uses merck.com.
Both companies applied for .merck as “community” applicants and went through the Community Priority Evaluation process.
Neither company scored enough points to avoid an auction, but the German company had the edge in terms of points scored.
Both applications then found themselves frozen while ICANN reviewed whether its CPE process was fair. That’s the same process that tied up the likes of .gay and .music for so many years.
While the July auction will be the first all-brand ICANN auction, at least one trademark owner has had to go to auction before.
Vistaprint, which owns a trademark on the term “webs” was forced to participate in the .web auction after a String Confusion Objection loss, but due to the technicalities of the process only had to pay $1 for .webs.

Pricey .inc does quite well in sunrise

The new gTLD .inc, which goes into general availability today, had a better-than-average number of sales in its sunrise period.
Intercap Registry, which runs .inc, said today that it had “over 270” sunrise registrations.
It’s not a massive amount, but it’s probably enough to put the TLD into the top 50 sunrises to date.
There had been 491 sunrise periods as of December 2018, according to ICANN data. The average number of sunrise regs was 137. The median was 77.
The largest sunrise to date was Google’s .app, which sold 2,908 domains during its sunrise last year.
Only five new gTLDs have racked up more than 1,000 sunrise sales, and three of those were porn-related. The fifth was .shop.
Based on 270 domains .inc would rank alongside similarly themed .llc, but also the likes of .solutions, .world and .team, where the case for a defensive reg is less clear.
While one can see a clear risk for companies whose names end in “Inc”, the expected retail price of .inc will be around $2,000, which Intercap says will deter cybersquatters.
Sunrise registrants will have paid a substantial markup on this regular price.
For those without zone file access, Intercap is actually posting the names and logos of the companies that have registered on its web site.

.CLUB to let brands block “trillions” of domains for $2,000

.CLUB Domains has launched a service for trademark owners that will enable them to block an essentially infinite number of potential cybersquats for a $2,000 payment every three years.
But the restrictions in place to avoid false positives mean that some of the world’s most recognizable brands would not be eligible to use it.
The service is called Trademark Sentry. In February, .CLUB asked ICANN for approval to launch it under the name Unlimited Name Blocking Service.
It’s cast by the registry roughly as a kind of clone of Donuts’ five-year-old Domain Protected Marks List, which enables brands to block their marks across Donuts’ entire portfolio of 242 gTLDs for far less than they would pay defensively registering 242 domains individually.
But while Donuts has a massive stable of TLDs, .CLUB is a one-horse town, so what’s going on?
Based on promotional materials .CLUB sent me, it appears that Trademark Sentry is primarily a way to reduce not defensive registration costs but rather UDRP costs.
Instead of blocking a single trademarked string across a broad portfolio of TLDs — for example google.ninja, google.bike, google.guru, google.charity… — the .CLUB service allows brands to block any domain that contains that string in a single TLD.
For example, Google could pay .CLUB $2,000, and for the next three years it would be impossible for anyone to register any .club domain that contained the substring “google”.
Any potential cybersquatter who went to a registrar and tried to register domains such as “mygooglesearch.club” or “googlefootball.club” or “bestgoogle.club” or “xreegtegooglefwrreed.club” would be told by the registrar that the domain was unavailable.
It would be blocked at the registry level, because it contained the blocked string “google”.
Customers will be able to add typos to the blocklist for a 50% discount.
To the best of my knowledge, this is not a service currently offered by any other gTLD registry.
It’s precisely the kind of thing that the IP lobby at ICANN was crying out for — albeit without the obligation to pay for it — prior to the 2012 application round.
.CLUB reckons it’s a money-saver for brand owners who find themselves filing lots of UDRP complaints.
UDRP complaints cost at least $1,500, just for the filing fees with outfits such as WIPO. They can cost many hundreds more in lawyers fees.
Basically, if you expect your brand will be hit by at least one UDRP in .club in the next three years, $2,000 might look like a decent investment.
.club domains have been subject to 279 UDRP complaints over the last five years, according to UDRPSearch.com.
But .CLUB has put in place a number of restrictions that are likely to seriously restrict its potential customer base.
First, the trademark will have to be “fanciful”. The registry says:

To qualify for Unlimited Name Blocking a trademark must be fanciful as defined by the USPTO and meet the .CLUB Registry’s additional requirements and subject to the .CLUB Registry’s discretion. Marks that are not fanciful but when combined with another word become sufficiently unique may be allowed.

“Apple” would not be permitted, but “AppleComputer” might be.
.CLUB told me that any trademark that, if blocked, would prevent non-infringing uses of the string would also not qualify for the service.
If you look at a UDRP-happy brand like Lego, which has already filed several complaints about alleged cybersquats in .club, it would certainly not qualify. Too many words end in “le” and begin with “go” for .CLUB to block every domain containing “lego”.
Similarly, Facebook would likely not qualify because one can imagine non-infringing uses such as facetofacebookmakers.club. Twitter is a dictionary word, as is Coke. Pepsi is a substring of dyspepsia. Amazon is primarily a geographic term. McDonald’s is derived from a common surname, as are Cartier and Heinz.
For at least half of the famous brands that pop into my head, I can think of a reason they will probably not be allowed to use this service.
.CLUB also won’t allow trademarks shorter than five characters.
Still, for those brands that do qualify, and do have an aggressive UDRP-based enforcement policy, the service seems to be priced at a point where an ROI case can be made.
Like Donuts’ DPML domains, anything blocked under Trademark Sentry is not going to show up in zone files, so we’re not going to have any objective data with which to monitor its success.