10 years of new gTLDs: why brands have never got the memo
The wave of new gTLDs in 2012 brought much fanfare, especially for IP owners, but have they lived up to the hype? Managing IP finds out
If something is “reset”, you could be forgiven for expecting a huge transformation in its place.
In the build-up to 2012, domain name management companies were furiously trying to market the launch of a slew of new generic top-level domains (gTLDs). On at least one occasion before and after the launch, it was billed as an unprecedented “resetting of the internet”.
With marketing like that, it was always going to be difficult for the reality to live up to expectations.
Now, 10 years on from so-called ‘reveal day’ on June 13 2012 – when the list of applied-for gTLDs was published – private practice lawyers, domain name specialists and in-house counsel reflect on the programme’s impact, especially on intellectual property owners, and where improvements should be made in any new round that emerges.
Before the US-headquartered Internet Corporation for Assigned Names and Numbers (ICANN) announced it was expanding the list of gTLDs available, there were just 22 on offer, most notably ‘dot com’.
ICANN said its expansion plans were intended to enhance innovation, competition and consumer choice. It wasn’t just brands that would benefit from this – consumers and other interest groups would have many more gTLD options too.
One of domain name and brand protection companies’ most aggressive sells was reserved for so-called ‘dot brand’ TLDs. The idea was that a company, Adidas for example, could register and market itself under a new ‘dot Adidas’ webpage.
This, it was claimed with almost feverish excitement, would be great from an IP perspective and would protect brands from the threat of cybersquatters.
But has it been the success story that was hoped for?
Ultimately, there were 1,930 applications revealed on June 13 2012. North America led the way with 911, 675 emanated from Europe, 303 came from Asia, while 24 emerged from Latin America and 17 from Africa.
In terms of ‘dot brands’, more than 600 were filed. Google, which made 100 applications, and Amazon (76) topped the brand rankings. Brand owners in the pharmaceutical, automobile and financial services industries were also prominent, but many famous brands did not apply, including Coca-Cola and Pepsi.
“I don’t think they’ve been the success that people in the domain name business first made them out to be,” says J Scott Evans, director of IP and advertising at software company Adobe in San Francisco.
“Most brand owners simply see it [maintaining a new gTLD] as increased real estate and will ask whether they have the resources needed to maintain and defend their marks there.”
In fact, Evans has experience of a general apathy towards the expansion at two companies.
At the time of the first application round, Evans was head of global brand, domains and copyright at Yahoo. He then moved to Adobe in late 2013.
Although Yahoo did apply for a ‘dot brand’ TLD, Evans says this was solely for defensive reasons.
“I explained that ‘Yahoo’ is a dictionary term and that, should someone else get it, we would probably get it back but it would be a bit of an embarrassment from a PR point of view.
“We applied, but I can tell you that nobody was interested from the business side, and I don’t think they’ve ever made any use of it,” he explains.
It has been a similar story at Adobe. By the time Evans joined the company it had already declined to opt for a new TLD.
“They weren’t keen on it because they did not want to retrain their consumer base that they weren’t at ‘dot com’ anymore and thought they might lose a lot of custom as a result. The new gTLDs were unproven and there’s a lot of value in 'dot com', where all the traffic was.”
The same notion is true for a senior IP counsel at a fashion brand in the UK, who explains that although a branded TLD could prove useful in the long run, “playing the long game” is not a strategy that many business executives are keen on.
He says he explained at the time that pushing all the content onto a new gTLD may prove to be a worthwhile investment in three to five years, but that this was not bought into at a high level so the business kept everything under a ‘dot com’ domain.
This reluctance has been spotted by lawyers too.
“Everyone expected brand owners to actively use their gTLDs,” says Flip Petillion, a domain name specialist and founder of Petillion, a boutique dispute resolution firm based in Brussels.
However, he notes that while some brand owners have taken a defensive approach, others did not know what they would do with a new domain, so opted out.
“Replacing ‘dot com’ and changing a brand’s communication strategy costs a lot of money,” he notes.
Doug Isenberg, founder of domain name specialist law firm GigaLaw in Atlanta, agrees. He says clients have lost interest in ‘dot brands’ over the years with many either directly or indirectly abandoning their plans.
“Even after all of these years there’s just not a strong incentive to use them given a lack of consumer education. ‘Dot com’ is what continues to attract the most interest from everyone: trademark owners, cybersquatters, and consumers alike,” he tells Managing IP.
He notes that the number of new gTLDs involved in domain name disputes is relatively small.
According to GigaLaw’s Domain Dispute Digest, a quarterly report that tracks data and trends from the major providers of the Uniform Domain Name Dispute Resolution Policy (UDRP), the majority of disputes still involve ‘dot com’.
In the first quarter of 2022, 2,531 ‘dot com’ domain names were subject to UDRP decisions, out of a total of 3,259 (70%).
“Despite the arrival of the new gTLDs, most trademark owners are primarily concerned about cybersquatting in the ‘dot com’ TLD, because it remains king,” he says.
However, there are some new gTLDs that some trademark owners have found worthwhile including restricted TLDs like ‘dot bank’ and ‘dot law’, Isenberg believes.
“I switched from gigalaw.com to giga.law because it allowed me to maintain my brand while shortening the overall length of my domain name and to adopt a new gTLD that is restricted, which means cybersquatting does not happen,” he says.
Embracing ‘dot brand’
There are, however, some companies that have embraced the new gTLD programme.
Nick Wood, co-founder of domain name management company Com Laude in London, says most observers would judge the success of ‘dot brands’ by what they see.
“People may say, ‘we don’t see that advertised or on posters so it must not exist’, but that’s not always the best indicator,” says Wood, whose company advised 100 ‘dot brand’ clients 10 years ago.
He notes that some brands, including in retail, use their registries for behind-the-scenes business activity.
“In the case of one retailer it drives the complex, highly secure, stock control system they use for more than 500 shops around the world,” he explains.
“It’s a bit like a walled garden. They use their registry to create a private space that supports critically sensitive and commercial information.”
German car manufacturer Audi is one example of a brand that used a ‘dot brand’ TLD – but in an effort to streamline business administration.
A source close to the company explains how, initially, this was mainly used for promotions to launch new Audi models and targeted users through click-based advertising.
From there on all the main Audi dealers (around 80 in Germany) were transferred to ‘dot Audi’.
“Overarching this are a number of regional websites, which use a map to direct users to their closest dealership,” the source says.
Third-party dealers that sell vehicles from multiple manufacturers have also been allocated ‘dot Audi’ domains and a corresponding Audi-branded webpage that sits alongside their main website.
“We know how the car industry changes much more rapidly than other industries and if they [third-party retailers] do change or alter their stock, Audi can claw back the domain name and retrieve customer details and information.”
While some have capitalised on the administrative benefits, other businesses have been more commercially minded in migrating from ‘dot com’.
French bank BNP Paribas undertook a major project to migrate away from its various gTLDs and country-code TLDs (ccTLDs) to consolidate and run pages at group.bnpparibas.
Bertrand Realini, domain name manager at BNP Paribas in Paris, says the idea of new gTLDs was unprecedented.
“We immediately took the initiative to develop our own extension,” he adds.
Realini says BNP Paribas initially wanted the gTLD for marketing, security and defence. New domains were launched in early 2015, first for individual clients, then for professional clients, and lastly for private banking.
He notes that a ‘dot brand’ cannot prevent infringement but that as soon as clients and partners know that an organisation has its own gTLD, they will become more wary of the potential threat from hackers and bad actors.
“In French we call this a ‘virtuous circle’: the more you develop and communicate in your gTLD, the less meaning will be given to cybersquatting on other gTLDs.”
The secret, he says, is ongoing and permanent communication with the general public, external partners, and within the company.
“We must be able to popularise and reassure, because habits have been in existence for more than 20 years (use of ‘dot com’), and we must totally re-educate our minds.”
However, despite BNP Paribas’s own success, Realini says that the overall success of the new gTLD rollout has been mixed.
While some have succeeded in opening up the domain name space, others have either been resold or disappeared, he notes.
Tech case study
In the UK, one of the major adopters has been a broadcasting and telecoms company.
The London-based online compliance manager tells Managing IP she joined the company at the end of 2012, just after the ‘dot brand’ domain had been delegated, though at that time it was not being used.
“It was all back end and so there were no concern about what it might look like on the front end,” she explains.
The company's first public-facing use of the domain was to promote a technology conference it hosted.
“We wanted to be tech leaders, so we decided to use the ‘dot brand’ for marketing to show that it was an event hosted by us [for others] and not ‘our event’,” she tells Managing IP.
Today all of the company's corporate offering is on the ‘dot brand’, including sustainability initiatives.
“We have 86 domains, so our efforts are about trying to get users acclimatised to the new space,” the online compliance manager says. “One of the best things about a ‘dot brand’ is it has no territory – it’s the same all around the world.”
However, like Isenberg, the online compliance manager admits that “dot com is still king” in many consumers’ minds. The company still owns a ‘dot com’ registration but it is primarily used for products.
“People are reluctant to change and hide away from it, many people are still fixated on ‘dot com’, but there is no space in that world anymore.”
IT not IP?
One point that sources do agree on is that the expansion of new gTLDs was too focused on IP protection when perhaps more attention should have been paid to areas that may attract more C-suite buy-in – such as cybersecurity.
According to Com Laude’s Wood, this was one of the main mistakes in the first round.
“We didn’t work hard enough at bringing everyone together including IT people,” he notes.
He points to the recent conflict between Russia and Ukraine, and subsequent Western sanctions on Russia, as an example of where a ‘dot brand’ registration could prove useful.
From a computer hacker’s perspective, a very good target would be a brand’s various ccTLDs, including those in Russia, Wood notes.
He explains how a recent experience with one client who wanted to pull out of Russia emphasised this. The client decided instead to register a back-up second-level ‘dot brand’ domain in various countries where there was a risk of a cyber-attack. Wood describes this as a “lift and shift” strategy.
“They were very aware that if they pulled out it would make it far more difficult to manage communication with customers.
“So, they replicated what they considered at-risk countries in a ‘dot brand’ registration, such as ‘Russia.X’. If their existing registry in one of those countries has to be turned off, they will still have a back-up function and can switch to the ‘dot brand’.”
Adobe’s Evans agrees that there was a lack of vision in not highlighting cybersecurity.
“China, at least in the press, is often accused of breaking into systems and you now hear about Russian hackers so there is definitely some value in looking at it from security standpoint in a way that you probably wouldn’t have done 10 years ago,” he says.
“Once the consumers understand that if it’s not from ‘dot Adobe’ then it’s not to be trusted, you can avoid those phishing attacks and hackers.”
He continues: “Maybe you’re primarily using 'dot com', but should that get attacked you can just push everybody through social media to ‘dot Adobe’ and never lose a second.
“The problem is that a lot of people just don’t understand the domain name system. IT people and some lawyers understand it, but branding and marketing people don’t and they tend to have a very short-term view of the world.”
He suggests branding teams are more focused on “meeting this year’s target than moving onto the next one”, adding: “Very few people take a strategic view and assess what they want the marketplace to look like in five or 10 years.”
However, there are other ways to use a ‘dot brand’ that don’t necessarily involve using commercial nous, notes Evans. He suggests showcasing a brand’s social responsibility or for internal HR matters as potential options.
While sources have highlighted some of the innovative uses of new gTLDs, both potential and real, they have not shied away from criticising ICANN.
Slow, stuck in its ways, and frustrating were some of the more publishable descriptions offered.
One source describes ICANN as in desperate need of change and “filled with people who have been there for far too long and think they own the internet”.
While debates about governance and leadership are inevitable in most walks of life, most sources agree that ICANN needs to up its game if it is to fully capitalise on the next application round – should that ever come to pass.
The London-based online compliance manager says ICANN – which she believes was not proactive enough in explaining the benefits of acquiring a new gTLD – should bear some responsibility for a perceived lack of take-up in the first round.
“It’s too set in its ways and needs to modernise if it is to make the most of the next application phase,” she adds.
Petillion says he thinks people would like to apply in the new application phase but bemoans the fact that there is still no decision on when this would start.
He describes a catch-22 scenario in which the 2012 applicants do not appear to be “obviously using their registrations”, lending weight to the argument of not starting a new round at all.
“But then there may be some people who are interested and want to apply but will never be in a position to do so until there is a new round,” he adds.
One source notes that the Generic Names Supporting Organization Council, which is responsible for developing and recommending gTLD policies to ICANN’s board, has also been stuck in a rut.
“The process is extremely slow. There have been meetings for more than four years on the new round but no progress,” he says.
‘Dot brand’ demands
Realini at BNP Paribas notes that the first programme was new to everyone, including ICANN, but he suggests ICANN should consider more flexibility with ‘dot brand’ registrations in any second round – including allowing them to be easily renamed.
“Of course, this is a complicated and potentially dysfunctional thing, but it should be proposed for a ‘dot brand’.
“Typically, firms with their own gTLD have some exposure and are subject to mergers, acquisitions, and rebranding. There is a need for the ICANN programme to adapt to this type of operation.”
At least one organisation is keen to see where its options lie in future.
Despite Adobe’s lack of registration in the first round, Evans is gearing up so the company is at least prepared for a second round – regardless of what decision it ultimately takes.
He is putting together a team comprising security, marketing and legal specialists to consider what Adobe may apply for, while educating them on the associated costs of running a domain.
For Adobe, and probably others alike, the big question will ultimately be whether an application is worth all the time, money and effort.
Either way, perhaps we could be sitting here in another 10 years’ time wondering what all the fuss was about?