New gTLD Strategies: Best Practices with
Fox Entertainment Group
Featuring:
Beth Allegretti, Fox Entertainment Group
Elisa Cooper, MarkMonitor Inc.
February 26, 2014
© 2014 MarkMonitor Inc.
New gTLD Strategies: Best Practices with
Fox Entertainment Group
Featured Speakers
Beth Allegretti, Vice President, Intellectual Property
Fox Entertainment Group
Elisa Cooper, Sr. Director, Product Marketing, Domain Management
MarkMonitor Inc.
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New gTLDs Are Here
1,350 New
Registries
• 50%+ single registrant
(.Brand) TLDs
• Over the next 2 years
• Approximately 620 new
gTLDs launching over
the next 2 years
• Variations in price,
eligibility requirements
and terms
6 Types of
Registries
•
•
•
•
•
•
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20 – 40 TLDs
Launching each
Month
Generic
Gripe
Vice
Corporate Identifiers
Charitable
Geographic
3 Choices to
Make
• Register
• Block
• Police
TLDs to Watch: The “Super Six”
Generic
.App
.Blog
.Home
.News
.Sucks
.Web
Corporate Identifiers
.Corp
.Gmbh
.Inc
.Ltd
.Sarl
.Spa
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Gripe
.Fail
.Feedback
.Forum
.Gripe
.Review /.Reviews
.Wtf
Charitable
.Charity
.Foundation
.Gives
.Care
.Help
.Gift/.Gifts
Vice
.Adult
.Bet
.Casino
.Porn
.Poker
.Sex
Geographic
.Istanbul
.London
.Madrid
.NYC
.Paris
.Tokyo
Fox Entertainment Group Background
Fox Entertainment Group:
• Worldwide media and entertainment company
• Produces and distributes theatrical releases, TV series, domestic
and international TV channels, digital and online media
Large domain portfolio – 40% ccTLD, 60% gTLD
In-house team manages domain registrations, acquisitions
and enforcement for all Fox business units worldwide
Register corporate domains, channel names, theatrical
marketing, domains used within TV shows, etc.
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The Fox Approach to New gTLDs
Early on, we realized gTLDs would have a significant impact
on our business and budget
Needed to get out ahead of the issue
• Education: the IP team and wider business
• Participation at ICANN
Started to develop our New gTLD Strategy
• Primary concern was protecting our IP in the new namespace
• Developed a flexible framework for making key decisions
• Worldwide IP team led the initiative
• Rolled out to business units over time
Our Strategy Continues to Evolve
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Review and Prioritize Core Marks
Started by prioritizing key marks:
• Tier 1: Core marks
• Tier 2: Marks with limited registrations
• Tier 3: One-off registrations
Provides a good foundation for decisions
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Build a Framework for Quick Decisions
Constantly reviewing ALL proposed gTLDs:
• .generics
• .geographies
• .media
Based upon our prioritized marks, we then determine:
• Where to register
• Where to block
• Where to police
Budget appropriately
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Utilize the Trademark Clearinghouse
Submitted all marks that we planned on registering in new
spaces
Want to be in a position to take advantage of Sunrise periods
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Determine Where to Register
Too cost prohibitive to register ALL marks defensively, in
every new TLD
Are considering registering core marks in related spaces:
• Sorted by category, e.g. as entertainment, media, sports, online
• Then by spaces within the category
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Determine Blocking Strategy
Blocking can be a cost-effective alternative to registration
Blocked core marks with Donuts
• Protection in over 200 registries
• Must be TMCH-validated marks
• Exact match blocking only for three-letter domains
• Be aware of “overrides” and “premium domains”
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Expand Policing Strategy
Moving from a defensive registration strategy to policing for
abuse
Expanding domain watching and monitoring for brand abuse
Take advantage of Rights Protection Mechanisms (RPMs) as
necessary
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Revisit Domain Management Policies
Visibility and central management are crucial
Limiting the number of individuals that are permitted to
request, approve and modify registrations
Using an established framework as a guide to registrations
—and controlling budget
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Re-examine Your Domain Portfolio
Good opportunity to pare-back our portfolio
Take a hard look at defensive registrations
Eliminate domains that no longer make good business sense
• Countries we’re no longer doing business in
• Domains registered but never used
• Domains where costs are high, but risk of cybersquatting is low
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Why .Fox?
Want to be in a position to take advantage of new digital
landscape
Own digital real estate
Continuing to evaluate for promotional use
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Keys to Success
Educate yourself and business stakeholders
Have a flexible framework in place to easily determine
registration, blocking and policing decisions
Be prepared to support an evolving strategy
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New gTLDs: Frequently Asked Questions
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What Should I Submit to the Trademark
Clearinghouse?
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Trademark Clearinghouse Purpose
Enables trademark
Does NOT
owners to:
• 1) Register their
trademarks as domain
names during so-called
Sunrise Periods or
purchase “Blocking”
• 2) Receive notification
(Claims Service) when
exact-match domain name
registrations are made
• Prevent registrations or
block others from
registering trademarks as
domain names
What Should I Block?
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How Does Donuts Blocking Work?
Prevents cybersquatting by enabling brand owners to block
their trademarks from registration at the second level across
all Donuts TLDs
That term is blocked from registration in all Donuts TLDs for
an initial period of five years
A domain blocked by DPML is not functional, meaning it may
not be used for a website URL, email address or other type of
domain related functionality
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Eligibility
Trademark
DPML String
Validity
Hallmark
hallmark
Valid
Amex
myamexcard
Valid
IBM Services
1bmservices
Invalid
(The DPML string must be an exact match or fully contain an
exact match of the validated mark)
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Blocking Exclusions
Registered A term will not be blocked in any TLD
where that term is already registered as
Domains
a domain
Premium
Domains
There are a limited number of higher
priced “premium” names which are not
DPML eligible
Character One and two character DPML terms are
Limitations not permitted. Three character DPML
terms are permitted but only as an exact
match of the trademark
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Are People Really Registering Domains in These
New gTLD Registries? Is There Cybersquatting?
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New gTLD Registration Growth
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How Should I be Policing for Abuse?
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Investigate and Capture Evidence
Detect fraud on the Internet quickly and investigate
immediately
• Exploits company identity
• Exploits consumer trust in company or lack of technical
sophistication
Capture evidence of egregious abuses proactively
Understand where abuse is having an impact
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Undertake an Active Defense
Leverage RPMs
•
•
•
•
•
URS (Uniform Rapid Suspension)
UDRP (Uniform Dispute Resolution Policy)
PDDRP (Post-Delegation Dispute Resolution Policy)
RRDRP (Registry Restriction Dispute Resolution Policy)
PICDRP (Public Interest Commitment Dispute Resolution Policy)
Initiate administrative, legal or technical means to shut-down sites
• Cease and Desist or Demand Letters
• Site take-downs via ISP under DMCA
Prevent customers from reaching the site
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Q&A
Featured Speakers
Beth Allegretti, Vice President, Intellectual Property
Fox Entertainment Group
Elisa Cooper, Sr. Director, Product Marketing, Domain Management
MarkMonitor Inc.
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Thank You!
For information on MarkMonitor solutions, services and
complimentary educational events:
• Contact via email:
[email protected]
• Visit our website at:
www.markmonitor.com
• Contact via phone:
US: 1 (800) 745 9229
Europe: +44 (0) 203 206 2220
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