How can I make the most of the potential new gTLDs?
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How can I make the most of the potential new gTLDs?

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With hundreds of new strings applied for, how should I approach them?

The .brand applicant

I have been involved in domain names in Philips IP&S for some time and we took the lead to present the business case for a new gTLD to the executive committee.

We advised that we should apply in about October last year. When we presented it, the executive committee took the decision on the same day. We are now working together with the sectors to get input on more detailed business plans. That takes some time.

We have applied for two new gTLDs: .philips and .philips (in Chinese). This is in line with our branding policy in the company which is mainly to use the Philips brand. We do have a number of sub-brands and we did discuss applying for those too but it is a big investment and every application requires a solid business case. In the end we decided not to apply for those.

We have had some thoughts at a high level about how to use the gTLDs. I expect the usage will start off at low level and increase in the future both in number and types of usage.

Now we know who has applied for gTLDs and who has not so we can begin to think in more detail about how we will use them. It helps us to know which companies have also applied.

We are convinced it will open up new business opportunities online. It will be a challenge for us to create online business opportunities to stay ahead of competitors who did not apply. Also we will be the boss ourselves, and will step up in the hierarchy of the internet. That's a positive thing for us. And it is a guarantee that the content is more secure and safe. Ultimately the success will depend on how other companies and our stakeholders will use the domains and we don't know that yet.

With regard to our existing domain name registrations, our domain name policy will have to change but that will take time and we will review it in due course.

The delay from the software glitch was not a problem with me and in fact I think Icann communicated very well during the delay. We were not so happy about the security glitch itself – but fortunately we were not affected. However, the second glitch when Icann published some details of applicants did affect us.

I don't like batching: it's playing games with a very serious issue. If batching needs to be done, there should be more choice. I don't particularly mind about not being in the first batch but I don't want to be in the last one – I don't want to have to wait up to years to get the gTLD.

The next step for us now is to review the high-level strategy and see how things work out in practice with the business sectors when the gTLDs are delegated. The biggest challenge is what to do to be ready for the delegations. I will have a team comprising people from the different sectors, as well as IT, and IP & Standards to work on that.

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Ingrid Baele Philips
IP & Standards
Eindhoven


The IP lawyer

There are roughly 10 points that companies should consider.

  1. Review all the applications: Consider whether there are any direct or indirect conflicts not only with your brand, but also with your areas of commercial interest and the goods and services covered by your trade marks. Pay special attention to whether the registry will be closed or open and the answer to Question 18 which covers the Mission & Purpose.

  2. Review the applicants: You need to know who is behind the application, the shareholders, investors, directors, the level of financial backing and where they are based. This can have an impact in a number of areas including applicable competition laws and potential registry liability.

  3. Reach out: Consider reaching out to applicants, to see whether they might consider withdrawing their application or working with you if the application is for a generic term of importance to you as well as what undertakings they may provide to not infringe your rights.

  4. Reflect on filing a public comment: Icann has put into place a public comment period which opened on June 13. This is standard Icann procedure: the important date to note here is August 12 2012 as any comments submitted before this date will be forwarded to the evaluation panels to review and be considered as part of the application's evaluation. Making a comment may depend upon whether you have applied for a related string, and it's worth considering liaising with others who may be on the same page as you before commenting so that there is some consensus. Consensus is a magical and mythical word in the Icann world. Initial evaluation is due to start on July 12 2012.

  5. Respond to a public comment: If your application is the target of one or more public comments, then it is important to consider rebutting.

  6. RPMs – Pre-Delegation Dispute Resolution – consider filing an objection: There is a seven-month window in which you are now able to file a formal objection to any of the applications. These include a Legal Rights Objection, Community Objection, String Confusion Objection and a Limited Public Interest Objection.

  7. Respond to any objections: An objection, if upheld, could kill your application, so consider potential threats early to be prepared. Careful and successful negotiation at point 3 above could even head off a formal objection.

  8. Raise relevant issues with your government: Icann receives input from governments through the Governmental Advisory Committee (GAC) which has 115 members. There is a GAC Early Warning process if a proposed string or registry operation raises national sensitivities. Look out for these in October 2012, on or around the Icann Toronto meeting. The GAC may supply Icann with "consensus advice" whereby it will advise that an application should not proceed and Icann is expected to follow such advice.

  9. Revised online brand protection strategy: With anything up to 1,409 unique new gTLDs being plugged in at the top end of the internet, this translates to a lot of new registries! Icann has stated that delegations to the root cannot exceed 1,000 a year, so we may see something like 20 new registries launched each week in 2013. As such, defensive registration strategy has to change, watching is key and there is a need to understanding and use the specific and new RPMs that have been created for new gTLDs.

  10. Remember the UDRP: All successful applicants for new gTLDs will be required to implement the Uniform Domain Name Dispute Resolution Policy (UDRP). WIPO has seen some 40,000 domain names disputed across 17 existing gTLDs, so the UDRP it is a tried and tested method and while it does not provide for damages, it does provide an efficient and cost effective method of dealing with cybersquatted domain names.

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David Taylor
Hogan Lovells
Paris


The consultant

Based on the 1,930 new gTLD applications Icann received, it is estimated that as many as 1,200 new gTLDs could enter the marketplace. If statistics from the wider application pool hold true, about one third of new gTLDs will be branded terms, while the remainder will be for generic and geographic terms, and terms in non-Latin characters.

While brand owners make up a significant portion of new gTLD applicants, a very high number of brand owners opted to not apply for their own gTLDs. All brand owners, regardless of whether or not they applied for new gTLDs, will have to adjust their strategies to continue to protect their intellectual property and promote their brands in this vastly expanded domain name space.

How can brand owners make the most of new gTLDs? The answer boils down to being proactive. Starting now, brand owners should follow developments in the new gTLD programme to get a sense of who will be operating which gTLDs, particularly those generic gTLDs that correspond to their industry or core products. Next, brand owners should reach out to the operators to begin to figure out how those new gTLDs will affect their future digital strategies. If your company produces wine, for example, you should research the three applicants for .wine to determine which rights protection and abuse prevention mechanisms each plans to offer, so you can be sure that your trade marks will not be infringed in this gTLD.

Similarly, brand owners should begin learning how Icann's policymaking process works and exploring ways to get involved. This will be the best way to ensure that their company's interests are represented, both in the policies surrounding the current gTLD expansion and in any future expansions.

Another major part of this proactive strategy is identifying ways to extract value from new gTLDs from a marketing perspective. If your company applied for one or more new gTLDs, odds are you have already begun devising ways to ensure a return on your investment. But if your brand did not apply, there are still opportunities to leverage the marketing power of new gTLD domains. These will become more apparent as time goes on and gTLDs enter the market, but the time to begin planning is now.

How should brand owners approach new gTLDs? The best approach is realistic and tactical. Being realistic means brand owners must choose which gTLDs they realistically need to register their brands in. Brand owners also need to be realistic when it comes to budget – a 50-fold increase in the number of gTLDs will inevitably require additional investment in trade mark protection, namely sunrise and defensive second-level domain registrations, monitoring, and enforcement efforts. But by planning ahead, brand owners can be strategic about their budgets and making sure they have adequate resources in place.

On the tactical side, now is an ideal time to establish a solid strategy and set of best practices for registering domain names. This will help brand owners avoid spending money unnecessarily during the potentially chaotic influx of new gTLDs.

It is still unclear how the future of new gTLDs will unfold, but the level of buy-in from major strategic companies suggests that new gTLDs could become powerful marketing tools. As long as brand owners are proactive, realistic and tactical, they will be able to treat new gTLDs as positive additions to their marketing portfolios, instead of burdens.

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Elizabeth Sweezey
FairWinds Partners
Washington DC


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