Jack Ellis

The original deadline for INTA’s survey on the impact of new gTLDs on brand owners has been extended, with INTA corporate members now having until Friday February 28 to submit their responses. The study is designed to provide empirical data on the real-world cost of the new gTLD programme on trademark protection and policing activities.

The impact study was launched last month with the intention of gathering insight from the trademark-owning community on the effects of the new gTLD rollout, which began in late 2013. ICANN had invited INTA to provide this feedback as part of its commitment to regularly review the impact of new gTLDs in terms of competition, consumer protection, security and IP rights. According to INTA, ICANN specifically wants to assess “the cost and effort required to protect and police trademarks,” adding: “To date no empirical data has been developed on the costs that brand owners have had to incur.”

This led to the launch of the cost impact study. In a recent interview with World Trademark Review (available in full as a podcast), Joseph Ferretti, 2017 INTA president, expanded: “The budget aspect is important to understand because something has to be sacrificed – budgets haven’t increased to accommodate the expansion in domain names, that’s for sure… [To date] There has been a lot of anecdotal evidence of the impact but not firm evidence that we can point to. That is why INTA is initiating the impact study – because we really want a data driven approach. So we are asking our members to give us information on the actual cost of the new gTLD programme, so we can talk about the issue with much more specificity.”

To ensure the confidentiality of responses, the survey is being carried out by a third-party service provider (Nielsen). Neither INTA nor ICANN will have access to individual responses; instead, Nielsen will collate the findings into a report at the end of the process.

Many trademark-owning INTA members will have already received email invitations to participate in the survey; for those of you that haven’t, you can contact research@hpolsurveys.com, which will send you an individualised link in order to complete it. INTA provides the following guidance on the survey process:

While completing the survey will only require approximately 30 minutes, the survey will require some preparatory work on the part of the corporate members with regard to the costs of trademark enforcement relative to domain registrations. Survey respondents will be provided with a worksheet to assist them with this process. Information to be collected in preparation for responding to the survey includes:

  • Number of domains registered under the ‘legacy’ (ie, ‘.com’, ‘.net’, etc) and ‘new’ (ie, ‘.bank’, ‘.sucks’, etc) gTLDs in the past 24 months;
  • Reasoning behind registering such domains and possible alternatives;
  • Number of trademark claims notices received and estimated cost associated with these claims notices (both in-house and outside counsel);
  • Estimated cost spent on general internet monitoring of trademarks to identify potentially abusive or infringing domain names;
  • Estimated cost spent on any of the following: cease and desist letters; UDRP proceedings; civil actions after adverse UDRP rulings; URS proceedings; ACPA lawsuits; and other trademark lawsuits resulting from a new gTLD;
  • Estimated cost spent on pursuing action against registrars and registries; and
  • Company policy with regards to premium pricing for domain names.

With the dearth of information on the cost of new gTLD mitigation, the study’s findings will be keenly anticipated. World Trademark Review’s most recent annual benchmarking survey, conducted during the first half of 2016, found that brand owners were on the whole relatively sanguine with regards to the programme. A clear majority (60.5%) of respondents reported no significant changes to their online enforcement strategies over the preceding 12 months; while domain name infringement slipped down on their list of priorities as compared to previous years, with combatting online sales of counterfeits now top of their internet-related enforcement agenda. This may be because strategies had already been adjusted to fit the reality of the new gTLD environment (the survey asking respondents to consider only the previous 12 months). It will be interesting, though, to see how the results of INTA’s impact survey tally with these findings.

What is important is that the study is as representative of the reality as possible, and that requires trademark counsel to engage with the research. Those wishing to do so now have less than two weeks to participate. 


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