The domain name registrar

First take a strategic view of the benefits. Research your customers and shareholders, your distributors and employees even perhaps the media to discover the importance of factors such as:

• First mover advantage: are you expected to be at the forefront of the next internet revolution?

• Locking out infringers: if you own a gTLD in the name of your brand and make the rules for the registry, carefully controlling who can register, will you see a reduction in online fraud? Will phishers be driven elsewhere and your e-commerce operation flourish?

• Prioritisation in the search engines: will operating a gTLD in the name of your brand always get you to the top of the search engines? Will it promote direct navigation with clients typing, for example, .yourbrand straight into a browser and finding you immediately?

• Enhancing your global registrations: with your own gTLD, should you care about ccTLD registrations other than in key territories? Will addresses such as www.yourbrand/uk or www.yourbrand/china be effective or will you still need to maintain an expensive portfolio of global registrations in case you dispose of a secondary brand?

• Cultural identity: having .yourbrand in English means that you can also have .yourbrand in other scripts such as Korean, Kanji, Arabic, Cyrillic etc. Would an IDN gTLD from launch day further your international standing?

• Brand recognition: how memorable is your current internet identity? If your .com is contaminated by variations, will a new gTLD eliminate confusion? Do secondary brands sit comfortably under .yourbrand? Would you rather own a generic TLD or .yourbrand?

• Marketing enhancement: just how creative can your marketing colleagues be with their own gTLD? Could they offer loyalty e-mail addresses or a social network to your clients? What might be the positive impact of .yourbrand on packaging and advertising?

Balance these answers with a consideration of the lost opportunity costs. If you don't apply:

• Could someone else with a registered right to .yourbrand in another class of goods and services make a successful application? Could you defend your position to your CEO if your brand was hijacked?

• Would it damage you to find that you were the only multinational in your sector to reject this opportunity?

Next there's the resource implications.

ICANN observers say the official application fee will be between $150,000 and $500,000 with perhaps two-thirds returned if you are unsuccessful. Although this will not be confirmed until the fourth quarter of 2008, the costs of prosecuting an application, setting up a registry and operating it on a day-to-day basis are unlikely to be less than $500,000 during the first year taking into account ICANN contract compliance, insurances, legal advice and the fees of the outsource providers who are essential to make a registry work securely and safely, 24 hours a day.

If your CEO has seen the reports that .paris and .nyc, .ebay and .google are queuing up to apply, telling him to sit back and wait might be prudent but may not be wise. Ultimately, it depends on the strength of your brand and breadth of your corporate ambition.

Nick Wood Com Laude London

The in-house counsel

When the plan to have new gTLDs was being discussed, many brand owners were hesitant about a wild launching of new gTLDs because they know how much time and money they already devote to domain name filing for defensive reasons under the existing gTLDs and ccTLDs. Many brand owners were worried that if they did not register their brand under all the new gTLDs, someone else would do it and then they would have to start legal actions to get them back. So the plan raised many questions and concerns. Nevertheless 200 additional extensions are better than just 10 as the filing strategy must be then reviewed because brand owners will not file for every available domain.

At first I had some doubts about the opportunity to seek a gTLD for our brands but then I realised that it might be worth owning a .nestle or .nutrition or something similar. This question is still open. Owning a gTLD is different to just waiting for others to launch a gTLD extension and then register domains under this extension. The advantages of having your own TLD would be the identity you could give to your domains – they would all have the same extension. It's like my identity card. If you look for me, you look for .nestle.

But a disadvantage is that brands change hands. A domain name should be an asset, which you can buy and sell in some way. Over the years, especially in our industry, brands change ownership. So while you can give your brand a home, you also limit yourself. For example, I could not easily transfer the domain kitkat.nestle, if Nestlé decided to sell the Kit Kat brand to another company.

We also have to ask what would we gain from it? Does it mean we would drop our .com registrations or country-code registrations? Probably not. Consumers often look for the country-code domains because they know the information they are looking for will be more focused in their local language or for their own country.

The other question to consider is: would we be interested in owning a generic word as a gTLD, such as .food or .coffee? For us the difficulty would be what word would we choose? In some industries, it might be obvious: you might want .car or .bank or .pharma. But if your company is active in many different areas it is more difficult: you cannot have 10 extensions yourself. One alternative would be to share the .food extension for example. But how is that possible with other companies, including our competitors?

The cost of launching and maintaining a gTLD will also be a decisive factor. It is very difficult to measure the profits we would make from having our own gTLD and the investment costs are high. For a registrar becoming a registry, it is different as they can sell domains at the second-level and thereby make money. We obviously won't be able to make money by selling domains under our .brand extension.

So that is why there is most interest at the moment from specific communities, such as cities or regions, or from registrars.

Caroline Perriard Nestlé Vevey, Switzerland

The lawyer

Before deciding whether to apply for a new gTLD that incorporates your company's famous brand, several issues merit serious consideration. Ultimately, the decision of whether to apply for that gTLD depends on how the company addresses and resolves those issues.

First, how will the company use the gTLD? As an authentication or certification measure to combat online fraud, the online sale of counterfeit products, or other forms of abusive conduct? Launching a successful "look for .yourbrand" advertising and consumer education campaign could significantly reduce incidents of phishing, sales of counterfeit products, or other abusive online conduct. Or, will the company use the new gTLD primarily as an e-commerce platform? Use of the gTLD in this way may well justify the associated costs and fees. Alternatively, does the company wish to apply for the new gTLD primarily as a defensive measure? Except as discussed below, it may not be a good use of company resources to apply for a new gTLD solely for defensive purposes.

Second, are other applicants likely to apply for the same gTLD? Even if the brand is famous, one should not discount the possibility of other applicants if the brand is used as a mark by third parties in other industry sectors and/or countries or if the brand is also a dictionary word (an arbitrary mark). The new gTLD policy recommendations adopted by the ICANN Board state that "strings must not infringe the existing legal rights of others". It is not clear, however, that the company would prevail in an infringement-based objection if the applicant also has legitimate trade mark rights in the applied-for gTLD or if it claims that it will use the applied-for gTLD for a community encompassed by the dictionary word meaning (for example, .sun for use by individuals and companies in the solar energy industry). ICANN's publication of the proposed dispute resolution procedures should clarify this point.

The policy recommendations also state that "strings must not be confusingly similar to an existing top level domain". If the company decides to apply for a new gTLD, it may wish to do so in the first application round if either category of applicant noted above will apply for a new gTLD to which the company's new gTLD is confusingly similar. Otherwise, that earlier applicant could object to the company's new gTLD on that basis. (Of course, this entire discussion assumes that any gTLD the company applies for is not confusingly similar to an existing TLD. If it is, the company should assume that the registry operator for that TLD will vigorously object based on the corresponding prohibition in the policy recommendations.)

Third, how will the company restrict registrations within the gTLD? To itself and its divisions? Can suppliers register domain names in the gTLD? Retailers? Consumers? The general public? The answers to these questions will, in turn, require additional decisions about specific registrant eligibility requirements. Because the company intends any gTLD to include its famous brand, the brand could be damaged if registrants not affiliated with the company use their domain names in ways that reflect negatively on the brand.

Finally, has the company considered the costs associated with seeking to apply for – and being awarded – a new gTLD? The company should also allocate resources to ensure it can participate in the ICANN policy process. ICANN requires gTLD registries to comply with its consensus policies. Because the gTLD includes the company's famous brand, active participation in the policy process will be especially important to minimise the likelihood that ICANN policies, once implemented, will reflect negatively on or otherwise damage the company's famous brand.

Kristina Rosette Covington & Burling Washington DC