It’s decision time on gTLDs

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Like it or not, the application window for the new generic Top Level Domains (gTLDs) opened last month, and you need to take a stand on whether to apply.

Back in July, I wrote that CMOs need to look at this as a strategic opportunity, not a nuisance. Since then, I’ve advised over 50 companies on this, and all share similar questions and concerns. Let’s look at the biggest ones.

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 factors that will be considered leave room for interpretation, but we believe that if you have trademark rights to your name and the organization applying for your name doesn’t, you’ll prevail. If the applicant has trademark rights for the same term in another sector, then 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. 

Concern: I’ll have to spend millions to defend my brands from cybersquatters.

This one doesn’t add up. We don’t see a huge risk of cybersquatting on top-level domains, or on second-level domains within the new TLDs.

A cybersquatter with no trademark rights would be foolish to apply for your brand name as a top-level domain, because the probability of being awarded the gTLD is almost zero. The perpetrator would have to pay the $185,000 application fee, go through the rigorous application process, describing in detail how it intends 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.

As for 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 brand 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’d want to prevent others from registering their domain in, and which don’t matter.

Concern: If I apply for my .brand, am I guaranteed to get it?

No. Several situations could arise that must be factored into the decision to apply and managed properly if you do apply. Another company can claim that your gTLD string infringes on their trademark. The more generic your brand or company name, the more likely that you could also face competition for your .brand string or a confusingly 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 want to own your 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 company in owning and operating a registry, then stay on the sidelines.

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