NEW GTLDS


As the launch of the first new generic top-level domains draws nearer, brands should be finessing their protection strategies now, as TB&I finds out.


“It’s finally time for brand owners affirmative action,”


to take said Brian Winterfeldt,


partner at Katten Muchin Rosenman LLP, while hosting a webinar on the new generic top-level domain (gTLD) programme on August 20, 2013.


It feels like a long time since June 2012 when ICANN, in a cramped room near London King’s Cross train station, revealed nearly 2,000 gTLD applications. Even longer, no doubt, for those who applied for a domain and have been waiting patiently as targets have been missed and deadlines pushed back.


Now, with the first sunrise periods set to open in October 2013, brand owners should be sharpening their strategies for dealing with an expected rise in online infringement.


“New gTLDs aren’t going anywhere,” says Patrick Flaherty, assistant general counsel at telecoms company Verizon, “so it’s important to get ready for what’s coming, whether you have applied for a .brand [application] or not.”


Flaherty, speaking alongside Winterfeldt on


the webinar, says the Trademark Clearinghouse (TMCH) is an important tool for brand owners. In the first instance, the centralised database of trademarks, which all new gTLD registries must plug into, provides a one-stop shop for using individual sunrise periods. Once a trademark is validated by the TMCH, a brand owner can pick in which sunrise periods it wishes to register that trademark.


Of course, this will be a costly business: there will be around 600 ‘open’ gTLDs—available for public registration and which pose the biggest threat of cybersquatting—making it


virtually


impossible to register domain names defensively in all gTLD sunrise periods.


In the past, rights owners took more of a scattergun approach to defensive registrations. Tis was in part due to the unpredictable nature and lack of rights protection mechanisms of many country-code TLD (ccTLD) operators and a lack of sophisticated technology, says Flip Petillion, partner at Crowell & Moring LLP.


www.worldipreview.com


Now, he says, “blanket registration in the potential 600 open gTLDs is simply not an option or an effective way of protecting rights”.


“Rights holders should engage with specialised corporate registrars


who offer extended


monitoring in gTLD registries quickly to identify potentially infringing registrations,” Petillion says.


Flaherty says Verizon has already been working with watch companies, which work by scouring gTLD registries for domain name registrations matching a trademark or brand. He says Verizon plans to register terms that “are of concern to our industry”, especially those picking up large amounts of Internet traffic.


“High performing domains give a good gauge and watch services give a good opportunity to assess where to register,” he says. “It’s important to track the value of a registered domain—and if it is not picked up by a third party or doesn’t generate much traffic, it might not be of much use.


“Te focus will be on core house brands,” he says.


Of course, not all rights owners work with watch service providers, so now might be the perfect time to start knocking on their doors.


Winterfeldt says: “Tis is a really good opportunity to evaluate the service providers in this space, and if you don’t have them, it’s a good time to engage them.”


Watch companies can help rights owners to implement a considered and effective strategy before the first gTLDs launch, Petillion says.


“Having an understanding of which trademarks to add to the TMCH and which domain names to register under new gTLDs will allow brand holders to focus on overall protection through monitoring and seize the opportunities that the gTLD programme represents.”


Indeed, brand owners should not just be viewing new gTLDs with fear—there is a chance here to reap the rewards of the explosion in domain name registries.


Stéphane Van Gelder, chairman of Stéphane Van Gelder Consulting, which helps companies manage their domain name portfolios, says brands should be going through the list of gTLD applications and identifying which registries may be attractive from a business angle.


“Understand what TLDs are coming and when. Talk to, and work with, experts to put together a naming strategy that allows you to reap the benefits without your domain name registration budget skyrocketing.


“You want to look at the opportunities. It’s very important not to forget that and not to sit in a corner waiting for the sky to fall on your head. Tere is an element of risk but there is a really big element of opportunity.”


One of the major benefits of the new gTLD programme is the “opening up of new space”, Van Gelder says.


“Good names are not always available, especially in .com. Te gTLDs provide more room for people to coexist. Brands have


traditionally


attacked the domain name panorama with the aim that they have to secure domains in all TLDs. I want to move away from that: there can be a coexistence of terms (as in the trademark world). Tere can be more room to manoeuvre.”


Second, he says, the gTLDs encourage businesses to make a “targeted approach” to their customers and audience, providing the option of a clearly orientated .sport domain, for example, compared with a more general .com.


Google and Amazon’s large uptake of gTLDs shows that companies do realise the gTLD programme offers opportunities, Van Gelder says, though he admits that many companies will still be “pulling out their umbrellas and waiting for it to rain”.


Dealing with squatters


Tere is still a large amount of uncertainty about how the whole programme will play out, and some brands undoubtedly fear that they will be attacked by cybersquatters from all angles.


Trademarks Brands and the Internet Volume 2, Issue 3 21


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