How one guy games new gTLD sunrise periods

Wanna buy a SOCIAL brand pen for a dollar? No? How about social.web or cloud.guru or direct.flowers?
One intellectual property lawyer closely associated with a number of new gTLD registries has been using a flimsy online pen-selling business in order to obtain potentially valuable domains during sunrise periods.
Thomas Brackey of Beverley Hills law firm Freund & Brackey has acquired dozens of premium domain names during sunrise periods. He was good enough to share some of the details with DI.
Brackey owns three trademarks on the terms “DIRECT”, “SOCIAL” and “CLOUD”. All three were registered in Switzerland in late 2012, having been applied for in July that year.
All three cover the category “stylos”, or pens.
If you want to buy a CLOUD brand pen, you can do so at pentm.ch, a web site Brackey seems to have thrown up rather quickly using Shopify.
All three marks appear to have been registered via Marcaria.com, which charges $960 for a Swiss trademark registration.
Brackey obtained Trademark Clearinghouse registrations for his three trademarks, which would have cost him at least $150 per mark.
He seems to have used the pentm.ch web site to fulfill the TMCH’s “proof of use” requirement.
With TMCH registrations, he’s able to participate in new gTLD sunrise periods, giving him the first opportunity to register social.tld, cloud.tld and direct.tld for the usual inflated sunrise prices.
The pens themselves, Brackey assures us, are real.
But he makes no attempt to pretend that the pen-selling business was in thriving need of brand protection under the new gTLD program’s brand protection mechanisms.
Brackey told DI:

In the course of preparing new gTLD applications, I came to be pretty familiar with the various policy developments surrounding the creation and implementation of the TMCH.
For the first time mark holders of all stripes, and from every country would be given a pre-emptive right to acquire domain names that had nothing to do with the substance of their brands.
Musing on that, I identified what I believed to be a legitimate opportunity to acquire some domain names in the newTLD landscape. More curious than anything, I decided to put my theory to the test and resolved to try buying some domain names.
I’m not sure what I’m going to do with the domains I’ve purchased. I’ve never been a domain investor before, and not confident I qualify as one now. It’s all a bit of an experiment at this point and is certainly fascinating territory from an IP perspective.
There will no doubt be a number of important international legal developments that arise from the gTLD process — new rules, new policies and new opportunities.

At least two of Brackey’s new gTLD clients — What Box? and Plan Bee, which use Brackey’s law firm as their mailing address — have also registered large numbers of sunrise names using this same method.
He’s even selling Plan Bee’s “CONSTRUCTION” and “BUILD” pens on his web site.
Brackey acknowledged that some people take a “pretty dim view” of what he’s doing.
I’d have to say I’m one of them.
In my view, while Brackey may not be strictly breaking the rules of the new gTLD program, he’s certainly not acting within their spirit.
Members of Intellectual Property Constituency and others fought hard for rights protection mechanisms that would help them protect their or their clients’ pre-existing brands from cybersquatters.
The RPMs were not designed to provide a way for investors to avoid landrush auctions or a mad scramble for nice names on the first days of general availability.
The “proof of use” requirement was added to the rules in order prevent the kind of debacle we saw with the European Union’s .eu launch, where bogus trademarks were used to game EurID’s sunrise period.
But the barrier is tissue-thin, requiring merely a screenshot of a web site to overcome.
Gaming new gTLD sunrise periods may not be cheap — it may not even be profitable — but I have to wonder what kind of reputational impact it will have on new gTLD registries that choose to participate.
If you’re a brand owner, would you be more likely or less likely to trust a new gTLD registry that chooses to participate in sunrise gaming?

Registrars screwing up new gTLD launches?

Some of the largest domain name registrars are failing to support new gTLDs properly, leading to would-be registrants being told unregistered names are unavailable.
The .menu gTLD went into general availability yesterday, gathering some 1,649 registrations in its first half day.
It’s not a great start for the new gTLD by any stretch, but how much of it has to do with the channel?
I tested out searches for available names at some of the biggest registrars and got widely different results, apparently because they don’t all properly support tiered pricing.
Market leader Go Daddy even refuses to sell available names.
The .menu gTLD is being operated by a What Box? subsidiary, the inappropriately named Wedding TLD2.
The company has selected at least three pricing tiers as far as I can tell — $25 is the baseline registry fee, but many unreserved “premium” names are priced by the registry at $50 and $65 a year.
For my test, I used noodleshop.menu, which seems to carry the $65 fee. Whois records show it as unregistered and it’s not showing up in today’s .menu zone file. It’s available.
This pricing seems to be accurately reflected at registrars including Name.com and 101domain.
Name.com, for example, says that the name is available and offers to sell it to me for $81.25.

Likewise, 101domain reports its availability and a price of $97.49. There’s even a little medal icon next to the name to illustrate the fact that it’s at a premium price.

So far so good. However, other registrars fare less well.
Go Daddy and Register.com, which are both accredited .menu registrars, don’t seem to recognize the higher-tier names at all.
Go Daddy reports the name is unavailable.

And so does Register.com.

For every .menu name that carried a premium price at Name.com, Go Daddy was reporting it as unavailable.
With Go Daddy owning almost half of the new gTLD market, you can see why its failure to recognize a significant portion of a new gTLD’s available nice-looking names might impact day-one volumes.
The experience at 1&1, which has pumped millions into marketing new gTLD pre-registrations, was also weird.
At 1&1, I was offered noodleshop.menu at the sale price of $29.99 for the first year and $49.99 thereafter, which for some reason I was told was a $240 saving.

Both the sale price and the regular price appear to be below the wholesale cost. Either 1&1 is committed to take a $15 loss on each top-tier .menu name forever, or it’s pricing its names incorrectly.
A reader informed me this morning that when he tried to buy a .menu premium at 1&1 today he was presented with a message saying he would be contacted within 24 hours about the name.
He said his credit card was billed for the $29.99, but the name (Whois records seem to confirm) remains unregistered.
I’d test this out myself but frankly I don’t want to risk my money. When I tried to register the same name as the reader on 1&1 today I was told it was still available.
If I were a new gTLD registry I’d be very worried about this state of affairs. Without registrars, there’s no sales, but some registrars appear to be unprepared, at least in the case of .menu.

First Donuts new gTLD sunrise periods looking tiny

It’s possible that fewer than 1,200 domain names were registered in Donuts’ first seven new gTLD sunrise periods, judging by the latest zone file data.
According to Donuts zone files dated January 31, just 1,164 proper domain names currently exist in .clothing, .bike, .guru, .ventures, .holdings, .singles and .plumbing.
By TLD, the names break down like this:

.clothing — 560
.holdings — 166
.bike — 146
.ventures — 125
.guru — 117
.singles — 50
.plumbing — 44.

As far as I can tell, based on sample Whois lookups, all the names were registered during the gTLDs’ respective sunrise periods, not during the currently ongoing Early Access Program.
On the face of it, these look like very small sunrise periods indeed (consider .co, which had 11,000 registrations during its sunrise in 2011) but there are number of important caveats here.
First, this data might be wrong. There have been hiccups and glitches in registry zone file provision for weeks, and this might be one of those cases. I don’t think it is, but you never know.
Second, the data might be still incomplete. Names were to be allocated after the conclusion of Donuts end-date sunrise, which was January 24. Not all of these domains might have been allocated yet.
Third, these numbers don’t reflect “dark” domains. These are domain names that are not configured with name servers and therefore won’t show up in DNS zone files.
Fourth, and most importantly, domain names that have been blocked by trademark holders under Donuts’ parallel Domain Protected Marks List service do not show up in zone files.
DPML is the Donuts offering to trademark owners that drastically reduces the cost of blocking a mark — potentially to just a few dollars per domain per year — across all of the company’s gTLDs.
We already know from a bit of Whois detective work by World Trademark Review that the likes of Microsoft, Apple, Wal-Mart and Samsung blocked their brands across all seven of these TLDs.
DPML is a bit of a bargain if you’re dead-set on blocking your brand in as many TLDs as possible, and it’s possible — maybe even likely — that the number of DPML subscriptions outstripped actual sunrise registrations.
It’s a given that most valuable brands are more interested in preventing misuse than they are in participating in the new gTLD expansions — Microsoft has no use for microsoft.plumbing.
Judging by the zone files, domains registered during sunrise are largely appropriate to the gTLD — .clothing and .bike are full of clothing and biking brands, with very little crossover between the two, for example.
But there are plenty of exceptions to that rule.
Some other stuff I noticed
I had a dig through the files and did a few Whois look-ups whenever I saw a name that piqued my interest.
There are no hugely obvious examples of widespread gaming to be seen but some arguably generic names did go to some domain industry folk who have inside knowledge of the new gTLD program.
Notably, several people associated with new gTLD applications managed by Beverly Hills IP lawyer Thomas Brackey of Freund & Brackey seem to have picked up nice-looking generic domains during sunrise.
Luxury Partners of .luxury managed to get its hands on domains including luxury.clothing, for example, while What Box?, which applied for six gTLDs, grabbed realestate.guru and wedding.guru.
That’s right, apparently there are trademarks on “real estate” and “wedding” somewhere out there, and domain registry What Box? was able to provide the required proof that it’s using them in commerce.
Brackey himself is listed as the registrant of cloud.guru and direct.[tld] across the seven gTLDs, among others.
George Minardos of .build applicant Minardos Group acquired build.guru during sunrise too.
I wonder if any sunrise names will be challenged under Donuts’ Sunrise Dispute Resolution Policy.
While .guru has only attracted 117 registered names so far, it does appear to be the one place notoriously domain-shy Apple decided to actually play, presumably due to the support “gurus” it employs in its stores — ipad.guru, mac.guru and iphone.guru all went to the company.
There’s a “religious” flavor to some of the registrations there too — scientology.guru and darshan.guru were both registered by their respective organizations.
Amazon appears to be the most sunrise-happy of all registrants, grabbing dozens of (probably) useless names including kindle.plumbing, prime.ventures and aws.bike.
Some porn publishers seem to have gone a bit crazy too, with names such as m4m.plumbing and cam4.clothing making an appearance.
I found a few domains on my trawl that appear to have empty Whois records — christ.holdings and ghost.bike to name two amusingly appropriate examples — which doesn’t seem to be in the spirit of sunrise.
So there are definitely some oddities out there, but so far it does not appear to me based on my first look that massive numbers of trademark owners have been held to ransom, nor does there appear to have been any wholesale gaming of the system.

Two more new gTLDs delegated

The new gTLDs .menu and .uno have gone live on the internet.
Both appear to have been delegated to the DNS root zone at some point over the last few days — nic.menu and nic.uno are both resolving right now, though nic.uno takes you to an Apache status page.
The Latino-focused .uno is the first gTLD of the 10 applications linked to Kanasas-based DotRegistry to become active; .menu is the first for What Box?, which now has three remaining applications.
What Box has already partnered with Go Daddy to offer .menu domains, priced at $49.99 a year or $199.99 a year if you buy a “priority pre-registration”.
I believe the current total of new gTLDs in the root is 34, 26 of which belong to Donuts.

New gTLDs bring back tiered renewal pricing

Only one mass-market TLD used it, and it’s often considered a bad idea, but variable pricing for domain name renewals is making a comeback with the launch of new gTLDs.
What Box? and Plan Bee are the first two new gTLD registries to start selling domains with tiered renewal fees, in .menu and .build respectively, via Go Daddy.
If you pay Go Daddy $189.99 for a “Priority Rre-registration” in .build, your annual renewal fee if you secure the name will be be $149.99, instead of the $99.99 other pre-registrants will pay.
Similarly, a Priority Pre-registration in .menu will set you back $199.99 a year, forever, instead of $49.99.
I understand that the standard Go Daddy initial registration fee for these two TLDs during general availability will also be $99.99 and $49.99 respectively.
The other two new gTLDs with announced pricing, .uno and .luxury, do not appear to be charging tiered rates.
Go Daddy confirmed that the renewal pricing will be permanently higher in the .build and .menu, telling us:

The industry is starting to move toward a tiered pricing system. As such, some registries have elected to make renewals higher on domain names captured during the priority pre-registration period.

It’s actually permitted under ICANN’s standard Registry Agreement.
Generally, the RA prevents registries charging variable renewal fees. If you find yourself running a successful business in a new gTLD, the registry is not allowed to gouge you for higher renewals.
There’s a provision in section 2.10 of the contract that is designed to “prohibit abusive and/or discriminatory Renewal Pricing practices imposed by Registry Operator”.
But the rule does not apply if you’re told at the point of registration that your renewal pricing will be higher.
The contract states that “Registry Operator must have uniform pricing for renewals of domain name registrations”, but grants this huge exception:

if the registrar has provided Registry Operator with documentation that demonstrates that the applicable registrant expressly agreed in its registration agreement with registrar to higher Renewal Pricing at the time of the initial registration of the domain name following clear and conspicuous disclosure of such Renewal Pricing to such registrant

The only major TLD to try variable pricing before now was .tv, which Verisign currently operates.
The .tv registry held back thousands of desirable strings when it launched in 2000. Instead of auctioning them, it priced these names to sell, but with renewal prices matching the initial registration fee.
If you bought a premium .tv name 10 years ago for $10,000, you’ve been paying $10,000 a year ever since.
This proved very unpopular — especially with domain investors, who continue to moan about the high carrying cost of .tv names bought years ago — and Verisign scrapped the policy on new registrations in 2010.
Some say tiered renewal pricing is the main reason .tv isn’t nearly as popular as it arguably should be.
But will it work in 2014?
Tiered renewal fees seems like an excellent way to discourage domainers from participating in your launch.
Would you be willing to pay higher renewal fees ad infinitum just for the chance for first dibs on the new gTLD domain name you want?