Jeff Ernst is a principal analyst at Forrester Research, serving CMOs and marketing leaders.
One thing’s for sure: ICANN’s gTLD program is a game-changer. The introduction of new .brand and .category gTLDs represents the biggest change to the Internet naming system since, well, since we’ve had websites.
The Internet Corporation for Assigned Names and Numbers (ICANN) opens the application window today, Jan. 12, and will run registration through Apr. 12, so company leaders need to decide whether they’ll apply, at a cost of $185,000 per generic top-level domain (gTLD), plus application and infrastructure costs that could dwarf that.
But that’s where the certainty ends. I’ve advised over 50 companies not to look at this defensively, but to evaluate the strategic opportunities made available by owning a registry. Some see this as the greatest opportunity to take control of their online identities. Others have heard the opposition from organizations like the Association of National Advertisers, and predict disastrous consequences if this program is implemented. Most are just confused.
Where’s the truth? Well, let’s look at a few of the biggest questions and concerns that brand owners have raised, and predict the most likely scenarios for how they will play out.
1. Concern: If I Don’t Apply, Someone Else Can Get My Brand Name.
This is true. ICANN has procedures to protect trademark holders from infringement, but the process doesn’t guarantee that another organization can’t get your string. If you don’t apply, the onus is on you to review the applications on the ICANN site after the window closes to see if anyone has applied for a string that is or contains your name. Assuming you have legal rights to the name, you can file a legal rights objection.
The court will consider certain factors that will be open for interpretation, but I believe that:
- If you have trademark rights to your name and the organization applying for your name does not, you will prevail in an objection and prevent the other applicant from winning your string.
- If the applicant has trademark rights for the same term in another sector, you’ll need to prove that the applicant’s intended use of the gTLD will cause harm to your brand, which will be difficult to do and you likely won’t prevail. Let’s say Delta Airlines and Delta Faucet hold similar marks on Delta within their industries. If only one applies for .delta, the other would have a hard time proving harm.
2. Concern: I’ll Have to Spend Millions to Defend My Brands from Cybersquatters.
This one doesn’t add up. I don’t see a huge risk of cybersquatting on top-level domains, or on second-level domains within the new TLDs because:
- Cybersquatters won’t vie for top-level domains. A cybersquatter with no trademark rights would be absolutely foolish to apply for your brand name, because the probability of being awarded the gTLD is next to zero. The perpetrator would have to go through the extensive process of completing the application, in which they describe in detail how they intend to use the registry, prevail against any objections, and pass all of ICANN’s technical and financial requirements. Also, there is no secondary market for gTLDs, so a cybersquatter would have no way to extort money out of you to buy it from them.
- Rights holders have first crack at second-level domains. Each new gTLD is required to have a “sunrise period,” which provides trademark and brand holders the first rights to register their brands as a second-level domain within the gTLD before it opens to general registration. Brand owners need to evaluate the new gTLDs and determine which ones they want to be part of, which ones they want to prevent others from registering, and which don’t matter.
3. Concern: If I Apply for My .Brand, am I Guaranteed to Get It?
No. Several situations could arise, which must be factored into the decision to apply and manage properly.
- A non-applicant could object to your application. Just like you can file a legal rights objection, another company can claim that your gTLD string infringes on its trademark.
- Another company could apply for the same or similar string. The more generic your brand or company name, the more likely that you could also face competition for your .brand string or a similar term. When this happens, ICANN first gives the parties an opportunity to work out a resolution on their own, which we don’t expect to happen, and then it will go to auction.
If you expect to ever own your domain name, then the best chance of that happening is to apply now. So, put the business case together and prepare a strategic application. If you haven’t identified any strategic opportunities for your firm in owning and operating a registry, then stay on the sidelines.
Image courtesy of iStockphoto, PashaIgnatov
More About: contributor, Domain Names, features, gtld, ICANN, trending, URLs
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