Researching our cover story (subscription or trial required) on how to protect trade marks in the new gTLDs, I spoke to few brand owners who were enthusiastic about Icann’s new gTLD programme. As Sarah Deutsch of Verizon (who is chairing a session on new gTLDs at the INTA Annual Meeting this month) put it: “If people are registering at all, they’re doing so defensively.”
Even with the new tools available to protect trade marks – such as the Trademark Clearinghouse, URS and operator-specific mechanisms such as the DPML – combating cybersquatting is expensive, time-consuming and unpredictable. And that’s before you consider the proposed .sucks domain. No wonder many in-house counsel observe the whole programme with something approaching despair.
Yet for some trade mark owners (about 600, in fact) this round of the programme is an opportunity to establish a new web presence, using their brands as gTLDs. In the article in this month’s issue, we profile Monash University’s .monash, the first branded gTLD to go live under the programme. Ian Tebbett, chief information officer at the University, described the new domain as “brand-reinforcing” and said it gives the University more control compared to other domains.
Among the many other brand owners who have applied to run gTLDs in this round are Alibaba, BBC, Fox, HSBC, LEGO, Richemont, Samsung and Yahoo. Few have revealed much about their plans yet, but as their domains role out over the next two years, I expect we will see some innovative businesses emerge as brands capitalise on the recognition, trust and security that a proprietary domain name offers. There are already rumours about the clever things Samsung plans to do with its Korean-language gTLD.
Moreover, .brand applicants won a significant concession at the Icann meeting in Singapore last month, with agreement on so-called Specification 13, which provides important safeguards for closed registries. These include allowing them to have only one registrar and providing a two-year cooling off period before an expired gTLD is re-delegated. Martin Samuel of HSBC, who chairs the Brand Registry Group, told me the developments in Singapore were “really positive”. They could even lead some brand owners to expedite their gTLD launches.
While the immediate beneficiaries will be the applicants in this round, the changes will also please those who apply for a .brand gTLD in the next round – and there will be a next round, probably in 2016 or 2017 (see our interview with Icann’s Akram Atallah, (right)). In fact, some people I spoke to told me they expect most of the applicants in the second round to be .brand domains, with the number of .brand applications being counted in the thousands rather than hundreds. These applicants will benefit from more certainty, more consumer awareness and quite possibly lower costs.
Once consumers begin to use and recognise branded domains, it may become safer to have one than not. Ultimately, then, brand owners could be the winners from the gTLD expansion.
The material on this site is for law firms, companies and other IP specialists. It is for information only. Please read our Terms and Conditions and Privacy Notice before using the site. All material subject to strictly enforced copyright laws.
© 2021 Euromoney Institutional Investor PLC. For help please see our FAQs.