By Ben Anderson and Luge Pravda
With an estimated 20 new TLDs (Top Level Domains, which is the suffix to the right of the dot) being launched on a weekly basis from August 2013, it’s time for retail brand owners to stop and think about their domain strategy once again.
Hundreds of new gTLDs (generic TLDs) will soon start to flood the Internet, exponentially expanding the real estate currently taken up by the dozen or so domain name suffixes we’ve all become familiar with, such as .com, .net, and .gov. We will begin to see new suffixes like .shop, .fashion, .cheap, .sports, and our own favorite, .ninja – rolled out and put to use in ecommerce and e-marketing. To give the reader a sense of the volume new gTLDs, about 2,000 were applied for, and some 300 have already been approved.
This explosion of domain name possibilities adds up to an enormously creative and expansive opportunity for companies to add relevance and online security to their brand. It’s also a brilliant new marketing tool for companies with specific versions of their brand in different geographies – so, for example, .walmart could take many specifying directions to the left of the dot, such as chicago.walmart, newyorkcity.walmart, investors.walmart and so on.
But with great opportunity comes great risk. Suddenly there will be hundreds of thousands of possible domain name permutations and search terms for any brand. Legitimate holders of identically named brands in different industries or geographies will need to stake their claim. The brand name “Polo,” for example, which is simultaneously an American fashion brand, a German car, and English mint, brings up the question, who would have most claim over .polo – Ralph Lauren, Volkswagen or Rowntree? As it happens, Ralph Lauren Corporation is the only applicant for that gTLD, but it would be interesting to see which entity had most claim to the gTLD had all three applied.
Then there are those without any legitimate claim to a brand name. Today, aside from competing with one another, brands are constantly fighting with spammers, counterfeiters and other trademark infringers, who go to great lengths to use legitimate brand names and assets for cybercrime. Bottom line, domain names are valuable, and 600 or more new opportunities plus nearly unlimited permutations for brands to be abused seems like a cybercriminal’s playground.
Managing Trademark Infringement Risk
Fortunately mechanisms are being put in place to help brands to protect themselves — such as ICANN’s Trademark Clearinghouse (TMCH). This virtual organization — an evolving database of submitted and validated trademarks — will act as a traffic light for new gTLD registrations. If someone tries to register a domain under a new TLD that exactly matches a trademark lodged in the TMCH, the trademark owner will be given warning of the potential infringement. Likewise, the trademark holder will be notified if that registration takes place, as there are cases of legitimate brand name crossover.
While the TMCH should not be considered the primary defense mechanism, there’s no reason for a brand not to use it. For companies with a small number of trademarks, it’s a relatively inexpensive measure, and should form the first part of a viable online brand protection strategy. Big brands should only register marks in the TMCH that they plan to actively register under new gTLDs.
Other Considerations in Upgrading Online Presence with New Gtlds
Preserving and protecting the integrity of your brand and platform should be first priority in considerations of jumping into the tide of available new domain names. In the current gTLD expansion, how can the risks of buying too many gTLDs, or buying too few, be minimized and monitored?
First of all, it’s no longer financially feasible to buy up all possible gTLDs. But in building enough protection around their brands, companies need to think strategically about how their current trademarks and brand names map to the gigantic new searchable gTLD landscape in a meaningful and sensible fashion. Determining the brand owner’s specific business interests, and separating what’s most relevant from what’s least relevant, is a worthwhile jumping off point.
Once a company has made these choices and invested in a portfolio of strategic domain names, this expansion will necessitate a greater level of vigilance, and also greater allocation to risk management, than currently exists. Finding brand infringers and shutting them down is a job that, along with the enormous brand marketing opportunity posed by approximately 1,200 unique new gTLDs, exponentially increases the challenge of protecting your brand.
Ben Anderson is head of new gTLD pProducts at NetNames, which specializes in corporate domain name management, online brand protection, online security, anti-piracy and acquisitions services, overseeing new gTLD operations for the group. An industry recognized expert on domain practice and operations, he is currently seated on various domain and compliance bodies for both ICANN and INTA. Contact him at Ben.Anderson@NetNames.com.
Luge Pravda, senior VP at NetNames USA, is a globally recognized expert in TLDs (Top Level Domain names) and online brand protection. Prior to joining NetNames in 2000, he spent five years in retail operations. Contact him at Luge.Pravda@NetNames.com.