The looming domain name war that brands should be preparing for

A lot of new generic Top Level Domains (“gTLDs”) are becoming available and their emergence is making life pretty interesting for brands which have to carefully take stock of which gTLDs could have an impact on their trademarks and which domains they should register to protect themselves. To complicate the situation even further, the roll-out is a phased roll-out and some of these new gTLDs include local South African gTLDs like .joburg, .capetown and .durban. Brands that don’t understand the registration process are going to lose out of potentially valuable domains, each of which could threaten their brands and trademarks,

You probably read or heard that ICANN (the body responsible for administering the domain name system that makes the Internet work) approved a number of generic Top Level Domains (usually referred to as “gTLDs”) in 2013. You are familiar with a number of gTLDs already: .com, .net, .org, .info and more. What changed last year is that a lot more gTLDs were approved. A couple randomly selected gTLDs include .blog, wine, .shop, .web, .photo (not to be confused with .photos), .sexy, .community, .cool, .agency, .social, .ceo and even .guru. The new gTLDs include gTLDs in other languages too including Chinese, Arabic, Cyrillic and even Hindi.

To say the Internet is becoming a pretty busy place for brands is an understatement because each of these new gTLDs represents a branding opportunity and because there are potentially a number of similar or related gTLDs, brands have to be pretty vigilant and proactive when it comes to registering their preferred domains at these new gTLDs. A hypothetical example is, say, Acme Hotels which has already registered acmehotels.com and possibly even acmehotels.net. One of the new gTLDs is .vacations so Acme Hotels may want to register acmehotels.vacations, perhaps even acmehotels.luxury or even acmehotels.holiday. What about a digital agency that delights its clients with its digital marketing services and may already have digitalagency.com and digitalagency.net. It should probably register digitalagency.social and even aim for digital.agency (although that could be a competitive one for sure).

To add to this, gTLDs have been and will become available in stages and, when they first become available, they will not be available for general registrations like most domains currently are. Brands will have an opportunity to apply for domains corresponding with their trademarks in a so-called “Sunrise” phase

Sunrise services allow trademark holders an advance opportunity to register domain names corresponding to their marks before names are generally available to the public.

New gTLD registries are required to offer a Sunrise period of at least 30 days.

Brands that don’t have competing claims for domains at these new gTLDs will have an opportunity to register their preferred domains, although possibly at a premium price. Those brands who do have competition will have to bid for the domains at an auction.

Preparing for this process is no small feat. For starters brands will have to review the gTLDs that are either available or which are becoming available and identify the domains they require. Ideally brands should also register their (registered) trademarks with ICANN’s Trademark Clearinghouse which is integrated with the domain name registration process for the new gTLDs and gives the companies operating the new gTLDs a mechanism to verify trademark claims. Here is a quick overview of what the Trademark Clearinghouse does and what the benefits are for brands:

Once the Sunrise phase is over, domains at the new gTLDs will probably become available for general registrations but all the valuable domains may well be gone by then and brands that missed out on the process will be left lodging claims for trademark infringement (and given the number of new gTLDs, there will probably be quite a lot more claims for arbitrators to work through).

If you thought it couldn’t be any more interesting (or scary, depending on your perspective), some of the new gTLDs which should start becoming available in the coming months include gTLDs with a local flavour:

  • .africa
  • .joburg
  • .capetown
  • .durban

If you are a South African business with regional offices, you may want to give some serious thought to the city gTLDs and pre-register your domains with your domain name reseller as soon as possible (disclosure: we are a domain name reseller with South Africa’s only active ICANN approved domain name registrar and we help our clients register domain names as part of their brand protection strategy).

The phased gTLD roll-out is probably going to help pre-empt a “big bang” but it is also going to keep brands concerned about their trademarks and branding pretty busy for an extended time period as they research which new gTLDs become available and when and then prepare for each registration process, defending their trademarks as they go.

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p>As I said earlier, saying the Internet is becoming a busy place is an understatement. For brands, it is about to become pretty interesting too.