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IP: Preparedness is the name of the game in new domains era

Trademark owners need to be aware of the opportunities gTLDs present for brand development and how to maximize those opportunities

As the world braces for an explosion in internet domain names, thanks to the introduction of a wide range of new gTLDs (generic top-level domains), trademark owners need to be aware of the enormous opportunities this presents for brand development and how to maximize those opportunities. At the same time, they need to be on their guard against potential threats from a host of new infringers seeking to hijack or otherwise capitalize on their brands.

The countdown has begun as businesses, marketeers and a variety of other organizations wait with anticipation for the release of the first wave of new gTLDs under the program being introduced by the Internet Corporation for Assigned Names and Numbers (ICANN) — the governing body of the internet domain name system. There are three new categories of gTLDs, covering brands (eg .Cadillac); generic sectors or subjects (eg .food); and geographies (eg .Vegas).

The first of these expanded gTLDs are now being launched, with nearly 30 names already in their "Sunrise” period, the window during which trademark rights holders have exclusive access to registrations. The first seven gTLDs (.bike, .clothing, .guru, .holdings, .plumbing, .singles, and .ventures) became available on Jan. 29, with others such as .equipment, .construction, .directory, .land, .today, .technology, .tattoo, and .sexy becoming available in February. Hundreds more are expected to follow in subsequent months. But what is the predicted uptake and impact of the gTLDs? How should trademark owners prepare for this expanded and unknown online world?

This is an exciting time for many businesses and other organizations wanting to make a greater impact in the domains name space, however, there is still some confusion and concern in the market about how the new system works. Furthermore, with such a significant increase in the number of domain extensions, trademark owners will face even greater challenges when assessing their brand development and protection policies — and they need to be prepared.

Some organizations have already been proactive in developing and implementing a comprehensive gTLD strategy. Indeed, a number have applied for a closed gTLD (one, such as a brand name, for an organization’s exclusive use and not available for broader public exploitation), while others have submitted brand names to the Trademark Clearinghouse (TMCH) in order to take advantage of priority registration under the “Sunrise” period. Some businesses are also utilising a service from US-based registry Donuts Inc., which manages a pool of new gTLDs. Donuts offers the Domains Protected Marks List, which gives businesses the chance to protect trademarked terms across all Donuts-managed gTLDs. Other registries with multiple gTLDs may also decide to make similar offers.

However, many other organizations are adopting a “wait and see” approach. Unsure of the best way to respond, unconvinced of the opportunities, and, in many cases, unclear about the best methods to defend against online threats, a large number of businesses are taking a step back and watching what happens before taking a decision on what to do.

What is your gTLD strategy?

With launches of the first gTLD extensions already upon us and subsequent launches seemingly picking up pace, in-house counsel and brand management teams need to be prepared to make clear recommendations to management on their gTLD strategy and action plan, taking into account the commercial implications of being ‘in’ or being ‘out’ of the program — and the risk surrounding such strategic decisions.

It is important that a gTLD strategy is aligned with an organization’s broader business strategy and commercial goals. In determining a gTLD strategy, there are a number of key factors that need to be carefully considered and evaluated, primarily:

Commercial objectives

  • What is the level of online activity for your organization now and in the future?
  • How important is a strong internet presence in terms of meeting your commercial objectives?

Optimising the opportunity

  • Are any of the new gTLDs related to your business or competitors?
  • Can the new gTLDs help support sales and marketing activity?
  • Could your organization use the new gTLDs to more effectively direct internet users to your website?

Managing threats

  • Are there likely to be any third parties who could take advantage of the new gTLDs and attempt to register domain names similar to yours? What impact would this have on your organization if their registration was successful?
  • Does your organization have sufficient domain monitoring tools to cover the expanded internet space?
  • Would your organization consider defensive registrations to provide added protection to your online brand?

While no-one can be certain of the extent that the new domains landscape will affect internet usage and e-commerce, what is certain is that organizations should be developing a domains strategy that’s going to support and protect their commercial goals — at the very least, a careful review of the quality and scope of their internet monitoring is an absolute must.

Timetable of gTLD launches

gTLD launches

Contributing Author

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Catherine La Rooy

Catherine leads CPA Global’s IP Portfolio Applications services, which include: Domain Name Management; Trademark Watching; IP recordals; and Data Verification. She has extensive experience...

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