New gTLDs - the summer of discontent


Stuart Fuller

New gTLDs - the summer of discontent

Some brands are still unprepared for the launch of new generic top-level domains. Stuart Fuller highlights why now is the time to act.

In June 2012, in a darkened room underneath the streets of King’s Cross in London, I sat and watched ICANN reveal the 1,730 applications for new generic top-level domains (gTLDs). Along with the thousands watching over the Internet, we listened intently as the timelines for the programme were revealed.

It appeared we would see the first of these new domain suffixes before the end of January 2013. While the outgoing ICANN chief executive Rod Beckstrom admitted the programme had been “difficult” in places, he was confident that as he handed over the reins to someone new, his legacy would be a new dawn for the Internet.

Fast forward a year and we are still in the dark as to when the first of these new TLDs will see the light of day. Beckstrom has departed, to be replaced by Fadi Chehadé in the hot seat. The new chief executive almost immediately expressed his concern that the programme had “ambitious” timelines and if he had had his
way, it would not be delivered in such a compact window. To an extent he was proved right, as the programme suffered a further delay to April 2013, and then subsequently to at least August 2013.

The new date suggests that things are moving at pace behind the scenes, and I sincerely hope they are. Talking to brand owners who have applied for a new TLD, they want to start getting a return on their initial investment. Some, already facing a two-year wait in the prioritisation order, are even having second thoughts.

The number of brand registration withdrawals, where strings are not in contention, has surprised many. Some are withdrawing because they felt it was a necessary defensive measure to apply, and now that they see the competitive landscape free from threats they feel less pressure to proceed.

Others are worried that their application could be affected by the Government Advisory Committee (GAC) communique issued at the Beijing meeting in April. Finally, many simply now do not know what to do with their own piece of Internet infrastructure.

The good news is that many brands have already got ideas on how the new gTLDs will deliver value to their brands and they see the current delays as an opportunity to be completely
ready for the biggest change the Internet has ever seen.

For brand holders who haven’t applied for their own TLD, the current delay should be a good opportunity to ensure they are fully prepared. It can take weeks, even months, in some large businesses to pull together all the relevant stakeholders who need to have an input into the registration strategy, making this period ideal for companies to a) ensure the current portfolio is in a good shape, making necessary adjustments for old brands, products and locations, and b) identify the new strings that should be actively used and proactively defended.

Some companies will be waiting for information such as pricing, search ranking treatment and registration criteria, but why wait? Making a decision whether to protect a domain name based purely on price is a foolhardy strategy (unless, of course, it is prohibitively expensive). The cost of legally recovering an infringed domain name often runs into thousands of dollars and, while there will be a lower cost for the faster dispute mechanism in place (Uniform Rapid Suspension), it will still potentially cost around 25 times as much as an initial registration.

Google it

As to how Google will treat the new gTLDs for search purposes, the simple answer is that nobody knows. Not even most Google employees will have much of an idea. We are dealing with multiple factors here, all of which are unknown.

The search giant has made some noises about ensuring that all TLDs, whether new or old, will be more stringently indexed, but at the end of the day, they will always return results with the most relevant content based on each and every search query. A great, relevant new gTLD will be useless if the content is poor. So once again, brand owners should use this period of waiting to ensure that their website content is compliant with Google’s best practice.  

"As some registries have already stated they will operate a 'first come, first served' approach to the sunrise phase as well, brand holders may miss out on protecting their essential digital assets."

One aspect of the new gTLD programme that seems to be working smoothly has been the opening of the Trademark Clearinghouse (TMCH). Since late March the database, run by Deloitte, has been accepting verified trademarks in readiness for the sunrise phases of the new gTLD programme.

A brand will not be able to enter the sunrise phase unless it has its trademarks verified with the TMCH. Many organisations are still adopting a ‘wait and see’ approach to taking this important trademark protection step. However, the saying ‘the early bird catches the worm’ could be very apt here.

As soon as the first gTLD delegation date is set in stone, many trademark holders will take steps to submit their trademark details. It is possible that the sudden increase in volume to the TMCH will cause bottlenecks and delays, meaning the sunrise period may commence before some brands have their trademarks verified. As some registries have already stated they will operate a ‘first come, first served’ approach to the sunrise phase as well, brand holders may miss out on protecting their essential digital assets. With up to 20 gTLDs being launched each week once ICANN gets into a rhythm, this could be a major problem for a brand. 

Because trademark protection doesn’t start until the date of the opening of the first sunrise period, there is no reason why a brand holder should not be submitting its trademarks now. Once they are verified and accepted the brand holder can tick one worry off the list.

While everything is certainly not going to plan, there should be no reason why the summer months should not be a period of readiness. It has taken us nearly 20 years to get to the point where we have 300 TLDs. In just a 10th of that time we will increase that number four-fold. The winners in the new world will be those who are prepared for what is about to come over the horizon, as the dawn of the new Internet is almost here. 

Stuart Fuller is director of communications at NetNames Ltd. He can be contacted at:

This article was first published on 01 August 2013 in World IP Review


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