Like it or not, the application window for the new generic Top Level Domains (gTLDs) opened in January, and you need to decide whether or not to apply. Let's take a look at the key concerns:
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.
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 gTLDs.
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. It would have to pay the $185,000 application fee, go through the rigorous application process, describe in detail how it intends to use the registry, prevail against any objections and meet all ICANN's technical and financial requirements. Also, there is no secondary market for gTLDs, so a cybersquatter would have no way to extort money from you.
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 its 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 the brand will go to auction.
If you expect you will ever want to own your name, then the best chance to be sure that happens 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.
Jeff Ernst is a principal analyst at Forrester Research, serving CMOs and marketing leadership professionals. He can be reached at [email protected]