Protecting your brand under the new domain names

There is potentially a whole new world of online branding on our doorstep.  See, www.considerthelaw.com.  Historically, .com has ruled the internet and online branding.  But now, there are hundreds of new generic top level domain names (gTLD) ready to launch.  Many have already been rolled out.

gTLDs are the letters or other characters to the right of the dot.  For example, .com is a gTLD.  Some of the new gTLDs include .holdings, .camera, .technology, and .shoes.  Some are Chinese, Japanese, Arabic, and Russian.  These are approximately 150 new gTLD that have been approved.  Over 1,900 applications have been filed for new gTLDs.

This is a major development unfolding for online branding and promotion.  It is still not clear what it means for brand owners, but it certainly means there will be changes.  As with most issues on the internet, brand owners need to follow the new gTLD rollouts for at least two reasons.  First, the new rollout provides new opportunities for branding.  No longer are brand owners limited to marketing and offering products and services under the .com gTLD, as well as the other less frequently used gTLD.  Second, brand owners need to consider defensive strategies for protecting their brand.  The opportunities for abuse and misuse have just grown geometrically.

For example, prior to the rollout of new gTLDs, brand owners had to monitor the introduction of new domain names for cybersquatting, which is the use of the brand of another in a domain name.  Although there were virtually unlimited options for typosquatting, which is a form of cybersquatting by changing one or two letters in a brand and including the intentionally misspelled brand name in a domain name, now the potential for typosquatting may be multiplied by as many as the number of the new gTLDs.

Fortunately, there are opportunities available under the new gTLD program to protect brand owners.  Although there are also many opportunities for cybersquatting, there is at least some help.  Brand owners should seriously consider taking advantage of these opportunities.

There are procedures for protecting against the approval of a new gTLD that includes a brand that is federally registered as a trademark and to address registration of second level domain names that constitute cybersquatting.  A second level domain name is the characters to the left of the gTLD, but to the right of the @, for example “acme” is the second level domain name of john@acme.camera.  Historically, brand owners have monitored the internet for cybersquatting under a few gTLD.  If cybersquatting were discovered, and if the brand owner otherwise qualified for filing, the dispute could be resolved under the Uniform Domain Name Dispute Resolution Policy (UDRP).  Now, however, brand owners need to address cybersquatting in second level domain names under the .com gTLD, as well as the multitude of new gTLDs.  UDRP is still an option, but there are other options as well.

Brand owners should also consider whether it makes sense to apply for a new gTLD.  However, this will make sense for major brand owners only.  The application fee alone is $185,000, and the actual cost of filing the application and then operating the registry, if approved, is significantly greater.  Having a gTLD unique to one’s brand will be a significant opportunity, but the cost is enormous.

The launch of the new gTLDs will provide significant benefits to brand owners, but will also create significant headaches.  Brand owners should be vigilant and understand the implications of the new gTLDs, both from an offensive and defensive perspective.