© 2014 MarkMonitor Inc.

New gTLD Strategies: Best Practices with Fox Entertainment Group

Featuring:

Beth Allegretti, Fox Entertainment Group

Elisa Cooper, MarkMonitor Inc.

February 26, 2014

New gTLD Strategies: Best Practices withFox Entertainment Group

� Featured Speakers

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Beth Allegretti, Vice President, Intellectual Property

Fox Entertainment Group

Elisa Cooper, Sr. Director, Product Marketing, Domain Management

MarkMonitor Inc.

New gTLDs Are Here

1,350 New Registries

• 50%+ single registrant (.Brand) TLDs

• Approximately 620 new gTLDs launching over the next 2 years

20 – 40 TLDs Launching each

Month

• Over the next 2 years

• Variations in price, eligibility requirements and terms

6 Types of Registries

• Generic

• Gripe

• Vice• Corporate Identifiers

• Charitable

• Geographic

3 Choices to Make

• Register

• Block

• Police

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TLDs to Watch: The “Super Six”

Gripe

Charitable

Vice

GeographicCorporate Identifiers

Generic

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.App

.Blog

.Home

.News

.Sucks

.Web

.Corp

.Gmbh

.Inc

.Ltd

.Sarl

.Spa

.Charity

.Foundation

.Gives

.Care

.Help

.Gift/.Gifts

.Fail

.Feedback

.Forum

.Gripe

.Review /.Reviews

.Wtf

.Adult

.Bet

.Casino

.Porn

.Poker

.Sex

.Istanbul

.London

.Madrid

.NYC

.Paris

.Tokyo

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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

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 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

� Does NOT

• 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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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)

Eligibility

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Registered

Domains

A term will not be blocked in any TLD where that term is already registered as a domain

Premium

Domains

There are a limited number of higher priced “premium” names which are not DPML eligible

Character

Limitations

One and two character DPML terms are not permitted. Three character DPML terms are permitted but only as an exact match of the trademark

Blocking Exclusions

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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

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Beth Allegretti, Vice President, Intellectual Property

Fox Entertainment Group

Elisa Cooper, Sr. Director, Product Marketing, Domain Management

MarkMonitor Inc.

Thank You!

� For information on MarkMonitor solutions, services and

complimentary educational events:

• Contact via email:

marketing@markmonitor.com

• 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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