The domain name gold rush

Although new generic top-level domains are coming thick and fast, brand owners shouldn’t forget about exploiting and protecting themselves in the existing addresses, as Anthony Beltran explains.

After years in the making, the new generic top-level domain (gTLD) land grab is underway. The domain name industry is seeing an average of five new gTLDs entering the market every week, leaving lots of companies scrambling to keep up or even get started.

At the time of writing, the registration volumes over the past two months are far from the ‘big bang’ that many industry insiders were touting. But they are still healthy, given the amount of exposure the general public has had at this point.

New marketplace, old concerns

It’s easy to get caught up in the hype of new gTLDs and all the associated concerns, whether legitimate or not, that this massive selection of new choices brings to IP practitioners and trademark owners. But it’s just as easy to—and more important for practitioners and companies not to—look past what is already out there in terms of generic domain names, such as .com, .net, and .org, and the hundreds of country-code TLDs (ccTLDs).

To put things in perspective, see the table on page 45 to see how new gTLD registrations stack up against existing gTLDs and ccTLDs.

The existing domain name market remains very robust and grew by nearly 19 million new domain names last year, a staggering number. The .com TLD remains on top but we are seeing huge growth in ccTLDs such as .ru (Russia) and .cn (China). With this strong growth, originating primarily in emerging markets, it remains essential for IP practitioners and trademark owners to plan and execute a sound strategy for the domain name portfolio that is tailored to their business.

Enforcement tools

A handful of tools has been created for trademark owners to enforce their rights in the domain name system; each method is appropriate in specific situations.

The most common method used today to recover or shut down infringing domain names is dispute resolution. The main types of dispute resolution are the Uniform Domain-Name Dispute-Resolution Policy (UDRP), the newly-created Uniform Rapid Suspension System (URS), and various arbitration methods specific to ccTLDs. More than 5,000 UDRP cases are filed each year, with 80 percent of them involving .com domain names.

The UDRP has been effective, but it remains to be seen how strong the URS will be. Designed only for clear-cut cases of infringement in new gTLDs, the URS has been used by only a handful of trademark owners, resulting in mixed success. 

It becomes complicated when a trademark owner has to look beyond .com and recover ccTLDs in foreign jurisdictions. In jurisdictions such as Russia, the registry, RU-Center, has no formal dispute resolution process. If you find yourself with an infringing or damaging domain name registration, your only option is the Russian court system.

In China, there is a formal dispute process created by the Chinese registry, but everything must be submitted in the local language. Not only do some of these options quickly become expensive, you’ll look back and ask yourself why you didn’t spend the few dollars to register the names in the first place.

If you are not interested in enforcement, you can perhaps acquire the infringing domain name through an anonymous acquisition. Using reputable brokers or registrars to negotiate and acquire a domain name on your behalf anonymously is very effective in many cases. It can be cheaper than a formal dispute process, and takes less time and effort on your behalf.

The final tool—and the most effective, in my opinion—is to develop a strategy for registering domain names and to be proactive about registering key domain names in key jurisdictions before others get their hands on them. Not only has this become a cost-effective solution, but using a registrar that focuses on corporate clients and understands their needs takes most of the work off your desk so you can focus on your business.

Strategies come in all shapes and sizes

In any business endeavour, you evaluate the marketplace, opportunities and risks. When it comes to effectively managing domain name registrations this strategy is no different. Companies and trademark owners have different needs, different tolerance for risk or exposure of their IP, and different goals. 

Consult with your corporate registrar and IP attorney to determine your best strategy and get a plan together to execute that strategy. You may be surprised at how much coverage and protection you can get for a relatively small budget. Building a solid portfolio involves working with a reputable domain name registrar with years of experience in handling and coordinating domain name registrations and management across the 300-plus jurisdictions around the world, as well as supporting the entire new gTLD programme.

A good corporate registrar will be able to advise you on proper strategy and risks, guide you through various requirements, and organise domain name launches and acquisitions. 

Anthony Beltran is chief operating and financial officer at 101 Domain. He can be contacted at: anthony@101domain.com