gTLD Strategy Congress Preview

01-04-2014

gTLD Strategy Congress Preview

Hong Kong is the host city for the Asia Pac Digital Marketing & gTLD Strategy Congress, from May 14 to 15. TBO looks at the main talking points and catches up with two of the event’s speakers.

The new generic top-level domains (gTLDs) are coming thick and fast, and ICANN has suggested that round two could open as early as 2015.

With that in mind, the 2014 Asia Pac Digital Marketing & gTLD Strategy Congress will combine sessions for attorneys and in-house counsel who have only just become aware of the programme, as well as brand managers and marketing specialists looking to use an applied-for gTLD to their advantage.

Hot on the heels of the Hong Kong INTA event, which finishes on May 14, the two-day congress kicks off with talks from departing and incoming professionals. Peter Cheung, who is leaving his post as head of the Hong Kong government’s IP department, and Edward Rubin, appointed chair of the Asian Domain Name Dispute Resolution Centre in January 2013, deliver welcome addresses.

Edmon Chung, chief executive of DotAsia, which manages the .asia gTLD, will also welcome delegates.

During the opening day’s afternoon session, Roland LaPlante, senior vice president at domain name registry Afilias, discusses the lessons learned from the first new gTLD round, in which the first registries went live in 2014.

Also during day one, the conference hears from new gTLD applicants including Karen Law, legal counsel at China’s online shopping marketplace Alibaba Group, and Tim Johnson, chief executive of Dot Kiwi in New Zealand.

Day two focuses on how best to use new gTLDs and what applicants need to do to ensure they are able to operate them effectively.

Topics include how gTLD owners can recoup their investment and make a profit, and how they can maximise a domain’s performance in search engines.

A second session will focus on brand protection strategies, highlighting the latest tools for monitoring and policing domains to maintain control over your IP.

Karen Law, legal counsel at Alibaba Group

Why did you apply for a new gTLD?

We applied for four new gTLDs—.alibaba, .alipay, .taobao and .tmall—mainly for brand protection and defensive purposes. As an e-commerce and Internet-based company, we tried to act quickly in response to ICANN’s new launch and policies, and the new gTLDs is a project that we have been following closely since 2009.

What are you going to do with your gTLDs?

We do not have a concrete plan to launch the new gTLDs externally at the moment; we still treat them as defensive IP assets.

However, we have been closely discussing with our management and business teams how possibly to exploit the gTLDs. One of the proposed uses would be internal use, including but not limited to use by our internal business teams, and by the merchants at our marketplaces and platforms.

What are the benefits of a new gTLD?

A new gTLD would, most importantly, provide flexibility for an entity to adopt and use whatever it wants under that extension. In the past, we always had difficulties in securing all extensions for a brand.

The certainty of securing and controlling the use and registration of the domains under a new gTLD makes us more determined to develop our e-commerce and industry business in a more stable, safe and secure way.

Will a new gTLD help to protect against infringement?

Definitely. The operation of new gTLD can help customers easily to identify an infringing website, and at the same time help brand owners to identify the same and take action. I like the Trademark Clearinghouse (TMCH) and blocking mechanisms.

Of course that doesn’t mean brand owners do not have to take responsive actions to challenge the validity of any registered domains, but at least we can do something more to avoid ‘some’ infringing registrations. Under the new regime, the Uniform Rapid Suspension System (URS) also helps brand owners to cancel domain registrations containing their brands in a more cost-effective and speedy way.

How should organisations such as Alibaba be adjusting their brand protection strategies to incorporate changes brought by the new gTLDs?

For the preparation of the new gTLD launch, Alibaba Group reviewed and modified our trademark portfolios. For the purpose of preparing for the second round of applications, we also filed some new applications for trademarks that are potentially important to our businesses.

In the past we focused our defensive registrations on countries where we have a significant local presence, such as China. However, we now try to register them in countries where we believe there would be significant attention and a possibility of cybersquatting. Alibaba Group now has more than 8,000 trademark entries worldwide covering more than 150 countries.

How can you use a gTLD to enhance your brand?

In terms of a branded new gTLD, it can help with exposure. Currently we are using .com for most of our marketplaces, with clicks on the .net, .com.cn and .cn sites redirected to the main site. Because what we are using is just a domain but not an extension, our brand is limited to the use on that .com domain. However, with the new gTLDs opening up, such as .alibaba, possible use of any domain under .alibaba can help with brand exposure.

Are you aiming mainly at Western or Chinese markets?

We are focusing on global markets. While we are a China-based company, our marketplaces are accessible worldwide. In the first round, we applied for a .brand in English, as we are focusing on global Internet users.

In the second round, we are seriously considering applying for a .brand in Chinese for defensive purposes, as it seems to us that Chinese characters have become more and more popular as a domain.

Do you expect a rise in trademark infringement/cybersquatting?

Whenever we have new launches, there are more users and therefore more infringement and cybersquatting. Initially we believed that the launch of the new gTLDs posed a threat to brand owners, as there will be so many extensions opening up, which means more areas where cybersquatters can work.

With the launch of the new gTLDs, we do reserve more resources internally and externally to combat these kinds of activities. Registering in the TMCH and blocking services, getting your domains in the sunrise periods, and challenging the validity of domains through the URS are challenges for brand owners in terms of resources and management of their portfolios. Brand owners should pay more attention and focus on the fast-growing domain and Internet world.

Edmon Chung, chief executive of DotAsia

What does the .asia gTLD offer?

The .asia gTLD is relatively new. We were one of the first wave of new gTLDs and have been in operation since March 2008. The vision of the .asia domain is to leverage the collaborative spirit of the Asia Internet community towards broader regional development and growth. DotAsia is a not-for-profit organisation, and proceeds from registrations go into community projects that support the adoption and development of the Internet in Asia. 

We believe that .asia provides a friendly name for local businesses from Asia that are expanding across the region, as well as initiatives around the world looking to establish their presence in Asia. 

What are your plans for .asia?

DotAsia is already supporting partners to enhance their presence and create new revenue streams online. Companies that can best capitalise on these opportunities will be able to build trust with their customers and improve their presence and rankings in search engines.

Besides commercial value, new gTLDs also serve as a symbol and rallying beacon for community building and development. The .asia domain is a good example. It is not only integral to our mission to promote Internet development and adoption in Asia, it is the inspiration for bringing together different people and initiatives around Asia for improving the region overall.

How does .asia help brand owners in the region?

It is the one domain that gives you instant access to the largest, fastest-growing and most dynamic region in the world. It is open to any individual, business and organisation around the world, and is fast becoming the web address of choice by Asian personalities, international brands and local initiatives across the Asia-Pacific markets. 

Beyond the region itself, the .asia gTLD appeals to Asian communities globally. It is a natural fit for web content and audiences related to Asia. Whether you are a local shop looking to expand regionally across Asia, or if you are from America, Europe or elsewhere looking to sell into Asia, a .asia domain name instantly turns your brand into an Asia-friendly name. 

What level of interest have you had in .asia?

Today, .asia has around half a million registered domains.

Which countries are you specifically targeting?

For .asia, we are seeing good growth particularly in India, South Korea, Japan, China and Australia. When .asia launched, many registrations came from the US and Europe. Today, that is no longer the case. The majority of new registrations are coming from Asia; eight out of the top 10 growth areas are from Asia.

Asia will be an important part of our strategy, but we will also look to reconnect with the US and European markets, especially with the Asian-American market and other pockets of Asian enterprise around the world.

Do you have any sales targets under the .asia gTLD?

We take a long-term approach: the targets are more focused on reaching sustainability within the first two years, and then reaching growth within the first five years from the launch date. 

Do you expect a rise in trademark infringement under the new gTLD programme?

Perhaps initially, but the measures in place, including the Uniform Domain-Name Dispute-Resolution Policy and the URS, as well as abuse prevention mechanisms being put in place, are good deterrents of abusive behaviour.

Furthermore, domain investment has taken on new courses as it exploits search engine optimisation and other types of natural traffic by using portfolios of domain names. In fact, while the secondary market for high value single names remains, the trend has been towards collecting targeted longer search phrase-based domains.

That said, it is still important for registries to work closely with rights holders to curb infringements.  And most important of all, the challenge is to turn protection into utilisation. n

The Asia Pac Digital Marketing & gTLD Strategy Congress in Hong Kong takes place from
May 14 to 15, 2014. For more information visit: momentumevents.com/domainasia/

This article was first published on 01 April 2014 in World IP Review

gTLD, brand, domains, trademark, Hong Kong

Trademarks and Brands Online