Budgets under scrutiny as the trademark tipping point comes to gTLDs 28 Nov 13
This week the 60-day sunrise periods for seven new gTLDs officially opened. The strings – ‘.bike’, ‘.holdings’, ‘.plumbing’, ‘.clothing’, ‘.singles’, ‘.guru’ and ‘.ventures’ – represent the first Latin scripts open for registration in the new gTLD programme and, as such, sparked a spike in press coverage of new gTLDs as media outlets turned their attention to the availability of new strings. For trademark counsel who have not yet considered their tactics for the expanded space, it’s time to talk budgets.
Commenting on this week’s sunrise openings, Jan Corstens, project director of the Trademark Clearinghouse, stated: “From fashion brands and dating agencies, to spiritual healers and cycle advocates, the launch of these new domains mean consumers can easily find specific content within each extension, while businesses will benefit from a stronger and more relevant online proposition. For these reasons, we anticipate significant demand for these TLDs when they become publically available in January 2014. However, IP owners need to decide now if they want to participate in each of these sunrise periods.”
Participation in the sunrises requires the recordal of trademarks in the Trademark Clearinghouse and, according to the latest figures obtained by WTR today, the number of marks registered as of this week stands at 17,500. However, Charlie Abrahams, VP and general manager of EMEA at MarkMonitor, urges those brands who have not yet turned their attention to the gTLDs to do so as we are now at what he describes as “the tipping point”, noting: “If you look at the number of new strings coming and make a rough calculation based on there being around 200 working days a year, you would be looking at more than one string launching every working day. In reality they will come in batches, but you need to consider now where you register and where you don’t. Otherwise you could be having to make a separate decision every single day. If you plan now you can make sensible strategic decisions. We have told clients to have a plan otherwise they will be a bit like Neo in the Matrix, trying to dodge multiple bullets at once.”
As to the plan of action to take, Abrahams notes that in deciding which strings to target for reservations, in addition to industry-related and geographic strings, “there are a number of religious and charity-related strings. Many companies today have charitable interests so you may want to consider those strings as of interest as well”.
Of course, the prime consideration will be budget as defensive registrations do add up. Donuts charges a sunrise participation fee of $80, a figure that Domain Incite’s Kevin Murphy notes is being marked up by around 50% by registrars.
For many trademark departments, an increase in budgets to cater to the expanded online space is unlikely. When quizzed on how protection can be budgeted for, Abrahams suggests that existing portfolios be reviewed and pruned, with the savings directed to gTLD registrations: “In terms of your budget, we predict you will want to spend 20-30% on gTLDs but you can free that up by considering current portfolio levels. You may have websites that no longer resolve, or old pages using old slogans that don’t generate a lot of traffic. Additionally, over time some companies have had different divisions register domains so there isn’t always a single definitive list of the resources owned. If you create one you can identify where savings could be made. You can certainly save budget by paring back in this way.”
This week’s seven sunrises all relate to Donuts applications, with more planned for the next two weeks (the sunrises for ‘.equipment’, ‘.photography’, ‘.graphics’, ‘.lighting’, ‘.camera’, ‘.estate’ and ‘.gallery’ are due to open on December 3, followed a week later by the sunrises for ‘.kitchen’, ‘.land’, ‘.directory’, ‘.today’, ‘.contractors’, ‘.technology’ and ‘.construction’). For these, and other Donuts-operated strings, another consideration is the Domain Protected Marks List (DPML). As reported previously in WTR, as the largest investor applicant in new gTLDs, the company has launched its DPML, which is designed to enable mark owners to block trademarks across multiple strings for one fee.
As WTR noted in its coverage on the DPML, participation is not without its budgetary challenges, with a five-year block costing around $3,000. However, in terms of the math, the move could be a money-saver long term, particularly if the mark to be protected will likely require widespread protection (as a comparison, if a one-year domain name registration costs, say, $10 a year and Donuts ends up operating 200 gTLDS, to protect a mark across all 200 for a five-year period would cost – at normal rate - $10,000).
Of course, trademark counsel may not have sought protection in all 200 strings and may want to obtain addresses that resolve, but Abrahams told WTR that it is an option to consider: “It sounds like a lot of money but it could be financially worthwhile for well-known trademarks to take this up.”
There is much to think about and it may be that, with gTLD sunrises now live, there is a rush to register in the Trademark Clearinghouse. Alternatively, brands may deliberate over their options and decide to adopt a ‘wait and see’ stance. What is important, however, is to take the time to balance the pros and cons of each strategy and take a decision based on an analysis of the likely risk (as well as what your budget actually allows).
The full list of sunrise dates is available here.
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