3 Essential To-Do List Items for Brand Owners Preparing for New gTLDs

by Robert Kriner on February 22, 2013

The imminent release of hundreds of new domain names through ICANN’s new gTLD program has been catching the eye of reporters at some major business publications, most notably Forbes and Barron’s. Two recent articles analyze the new gTLD program from a broader business perspective and the implications that it could ultimately have.

The Barron’s article is titled, “The Dot-Com Era Finally Comes to an End,” a bold statement considering no new gTLD has yet signed a contract with ICANN. The Forbes article, “Cybersquatters Get Rich New Territories With Generic Domains,” takes a different approach by providing some insights on how cybersquatters may look to benefit off this Internet expansion.

While it is hard to judge at this point whether or not a new gTLD will replace .com as the top-dog domain, or how much cybersquatting will increase in the new gTLD domain space, one thing is certain – the new gTLDs will have an impact on brand owner strategies. With that in mind, here are three items that should be on every brand owner’s to-do list right now to prepare for the launch of the first new gTLDs:

The Trademark Clearinghouse
When we take a look at the current program timeline, the Trademark Clearinghouse will be the first step that both ICANN and brand owners will need to take before any new gTLDs actually go live. ICANN will need to finish its work with IBM and Deloitte on implementation. Brand owners will need to have their marks ready for submission once the program opens. Now is the best time to review trademark portfolios and have a final list of marks for submission ready to go. The two services that the Clearinghouse will help facilitate (new gTLD Sunrise periods and trademark claims) will be crucial for brand owners as they move forward.

Preliminary List of gTLD Strings to Watch
By now, every brand owner should have reviewed the list of applied-for gTLDs at least once (although a second or third viewing doesn’t hurt) and put together a list of gTLD strings that they are going to monitor moving forward. There are factors still at play that could change brand owners’ watch lists in the upcoming weeks, such as the release of initial evaluation results and the subject of contention sets. Looking further ahead, brand owners will need to start tracking sunrise dates and registry requirements as that information becomes available. It is possible that some registries will set their own standards for registering domains in the strings that they’ll be managing (e.g., .NYC requiring a New York City zip code).

Offensive and Defensive Strategies
Focus and attention should be placed on protection of a brand in the new gTLD space, but due to the sheer size of the program, strategies may need to be redeveloped based on the gTLD string that is of concern. This means that a brand owner’s strategy for dealing with defensive registrations in a geographic TLD may differ from those implemented in a generic keyword TLD, which may be even more different if the generic TLD is a term that is directly connected to the brand’s industry. In this case, brand owners may also want to consider registering domains in an “offensive” manner to use for future business plans or goals. While the infringement possibilities are likely to increase in the new gTLD world, the opportunity for new business models and plans will also bubble to the surface.

As Benjamin Franklin once said, “You may delay, but time will not.” To put this in more ICANN-friendly terms, “You may delay, and ICANN may from time to time, but the new gTLDs are coming whether you’re prepared or not.” If you’re a brand owner and you haven’t started these discussions yet, now is the time to do so.

Click here to access our presentation materials and webinar on ““gTLD Madness: The Brand Owner’s Road to the Big Show” that was held on March 11, 2013.

Previous post:

Next post: