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ICANN’s recent announcement of what it called “an exciting milestone in the evolution of the domain name system”—the delegation of the 1,000th new generic top-level domain (gTLD)—went largely unnoticed. While that’s consistent with the new gTLD program in general (at least from the perspective of the general public), that doesn’t mean trademark owners should forget about them.
I can’t think of a single new gTLD that I’ve seen promoted in a mainstream advertisement or any company’s marketing materials.
Of course, as a domain name attorney, I’m well aware of the new gTLD program in general, as well as some specific adoptions, such as <abc.xyz> by Google’s parent Alphabet; <badgerbank.bank> by a small bank in Wisconsin; and <global.canon> by the camera company.
The nTLDStats website reports that more than 26 million new gTLDs already have been registered. And a $70 million offer from one registry operator (Donuts) to another (Rightside) clearly says something about the size and scope, if not the perceived future importance, of the domain name business.
But most people with whom I talk outside the domain name industry seem fully unaware of any of this.
The sheer number of new gTLDs means that most of them are struggling for recognition. Indeed, excluding the top five most-popular new gTLDs (.xyz, .top, .wang, .win and .club), no new gTLD accounts for more than 2% of the market, according to nTLDStats.
Many of the new registrations are speculative, defensive or infringing—none of which seems to be sustainable.
As I’ve written before, new gTLDs are appearing with increasing frequency in domain name disputes. Indeed, of the top 10 most-disputed top-level domains in proceedings at the World Intellectual Property Organization (WIPO) so far this year (through June 28, 2016), half are new gTLDs (.xyz, .top, .club, .online and .cloud). Trademark owners are usually finding it pretty easy to win proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), depriving domain name registrants of any benefits they have sought in registering in the new gTLDs.
In some UDRP decisions, the new gTLD is even making a trademark owner’s case stronger. For example, in ordering transfer of the domain name <premierleague.club> to The Football Association Premier League Limited, one UDRP panel wrote:
In the Panel’s view, the inclusion of the TLD “.club” does not diminish the confusing similarity. To the contrary, this Panel finds that the inclusion of the descriptive term “club” reinforces the confusing similarity between the PREMIER LEAGUE trademark and the disputed domain name because the teams that compromise Complainant’s league are commonly referred to as clubs.
(See also my earlier blog post: “When is the Top-Level Domain (TLD) Relevant in a Domain Name Dispute?”)
Still, in many cases, trademark owners are simply choosing to ignore the new gTLDs because they don’t value them for themselves and they sometimes don’t care what a cybersquatter is doing in a gTLD that no one knows about.
But trademark owners cannot ignore the new gTLDs entirely. Some gTLDs may be more important than others, due to their popularity or their relevance to the trademark owner’s business. And some domain names using new gTLDs may be particularly problematic, based on how they are being used.
Ultimately, it seems as if a relatively small number of the now 1,000+ new gTLDs are likely to gain much traction. Trademark owners would be wise to monitor their popularity and selectively enforce their rights when doing so is necessary or important to protect their brands.
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...who are the only ones who’ve heard of new gTLDs, the evidence points otherwise.
So does increasing and widespread use in advertising and elsewhere:
http://www.inthewild.domains
I am equally puzzled by some of your statements, Doug.
Trademark owners do care about new gTLDs. While some registrations may be speculative, defensive or infringing, see how some of the most well known brands in the world are using new domains here: http://showcase.ninja/tagged/Brand.
You are right if viewed through the statistical lens of .com’s total registrations. The conventional wisdom is that the TLDs (.tel, .mobi or .museum, anyone?) that came after but before the round of new gTLDs are by-the-numbers disappointments. But viewing new gTLDs that way overlooks their essential value—creating memorable name-space.
The new gTLDs give companies, individuals and institutions for more easily and accurately reflect their products, personalities and perspectives. It was never likely to happen overnight, but the early signs are encouraging.
I am particularly fond of any site ending in .pizza!
There are companies who are learning about the new internet addresses and who are also using them. The speed of adoption is going to be gradual, but steady. The initial .com phenomenon is not a good comparison since it was a one-of-a-kind, upstart event and one of only a few choices (com/net/org).
As a new gTLD example, .ENERGY is an interesting industry-specific choice. Presently, it has a small number of registrations, but a considerable number of energy companies that have enthusiastically migrated to it. Moreover, there are a multitude of energy companies worldwide who do not know yet it exists.
Mansfield Energy is the 46th largest privately held company in America, an $8 billion company. They have launched Mansfield.energy and it is co-existing with their original site, MansfieldOil.com. Their new Mansfield .energy address is already being promoted across a number of business sites. As these types of implementations slowly increase, we will see public awareness grow in regard to the new tld choices as well as corporate awareness.
Earlier this month, Apple registered Apple.business and Apple.world. Some will reflexively claim those are just defensive registrations. But we don’t know that. Apple is expanding into many lines of business, like Google, and it would not surprise me to see Apple launch an Apple.business corporate website to showcase the company’s new directions in business.
We have a dedicated page listing a number of energy companies that have moved to the new .ENERGY address. If you view these as a respectable starting point, it is not a huge leap to imagine that geo’s (.NYC, .miami) and industry-specific domains (like .energy) will become much more commonplace in the future.
Doug,
WE analyze nTLD zone files (over 900+) at Dataprovider.com and I can tell you, I get to see the usage for many of these nTLD’s and you would be suprise at how many websites ending with a nTLD, do have e-commerce attributes, such as a shopping cart attached, payment method, payment provider etc and/or even unique content
I would not be too quick to make judgement without data (beyond numbers) to support your statements.
I would say that Registries have the onus to promote their nTLD’s beyond the current registrar channel partners as well to help increase awareness. Alternative channels should be explored…
Sam
The problem with comparing the new gTLDs and their usage to that of the legacy gTLDs is that it misses a very important point. Most of the legacy gTLDs are now generic. (Originally .COM was for business, .NET for network operations and .ORG for non-profits organisations.) This means that the extension, the TLD string, does not really define the niche. Many of the new gTLDs are actually niche TLDs in that extension, the TLD string, defines the niche. It acts as a limiter. In this respect, many of these new gTLDs are like ccTLDs. They take a long time to gain acceptance and gather registration volume. Along the way, the more successful build a community that begins to identify with the TLD as being “their” TLD.
HosterStats.com has run a full web usage survey of all available new gTLDs in June (in addition to the usual monthly gTLD and ccTLD web usage surveys). Defining and measuring usage is a complex task. There are many forms of usage from the personal blog to the fully deployed e-commerce site. Large, fully deployed e-commerce sites are actually more common in mature TLDs than early phase TLDs. Even the number of domain names in a TLD that are up for sale can provide an indication of the interest in the TLD. But TLDs do not exist in isolation. The global market is actually a small one. The reality is that even large generic TLDs such as .COM are actually a set of country level markets with a smaller global market. And the ccTLDs are beginning to overtake .COM and the legacy TLDs in those country level markets. This is the market that in which new gTLDs have to operate.
These new gTLDs are still in their earliest phase. Expecting them to compete directly with long established TLDs either in terms of usage or registration volume is not wise. The key metric for these new gTLDs is not traction but usage. Usage drives adoption. There is a virtuous circle with domain names. The registrants have to find their own use for the domains. They develop them into working websites. Then people see them and awareness increases and more domain names are registered. And it takes time.
The numbers of registrations in a TLD are just snapshots. They don’t indicate how a TLD is being used or where it is being used. Grouping all new gTLDs as a single market is also unwise because the target market for each new gTLD, apart from the plurals and abbreviations, is generally different. If you compare a niche TLD with a generic TLD, the niche TLD is probably going to have fewer registrations. But that doesn’t necessarily mean that it is less developed. And the renewal rates on some of the smaller new gTLDs is quite high for new TLDs even taking the flattened growth curve and lack of speculation into account.
Some valid comments made, John. Thank you. I am not making any reference to comparing any nGTLD's to legacy TLDs - wouldn't be fair at all. However, current usage, is telling of how current users look to the nTLD they have their names registered in. Usage insights are a starting point in addition to numbers - and gives us some idea of the nTLD story..and it will evolve..early stages, to your point.
Interesting discussion. Unlike most commenters to date I’ve no personal stake in this, but have always found the business case for .brand TLDs stronger than new gTLDs.
The comments to date broadly support this view.
Another good gTLD example worth watching: News.markets
They are staffed by some industry veterans of note and are already getting about 80,000 unique visitors monthly.
I like the synergy generated by the words on each side of the dot. Illustrates some of the clarity and purpose inherent in the new gTLD paradigm when descriptive words are paired correctly.
I thought your analysis was fair and some criticisms of your viewpoint unfair. I work in the domain industry. Most of my friends and family are unaware of the new TLDs. I agree that “some” trademark lawyers are ignoring the new TLDs. I’ve done an analysis of several large corporations who failed to register relevant new TLDs in their line of business. On the other hand I see a good number of brands utilizing their dot brand, although they have not used them in mainstream advertising. Hoping this changes soon. Once a big brand launches a widespread ad campaign using a new TLD, public awareness will grow and other brands will join in the fun. See brandtld.news/active-brand-tlds/ for a showcase of active dot brands.
From a business perspective, the new gTLDs are expensive, dilutive and risky. A business can be expected to analyze each of the new TLDs to discern whether there is a risk of squatting. And the new registration(s) must survive amid predictions of 99% failure of the new letters to the right of the dot. But ICANN gets its 20 cents regardless.