The new gTLDs are here: are you prepared?


Stuart Fuller

The new gTLDs are here: are you prepared?

Now the first new generic top-level domains have been approved, Stuart Fuller examines what brands should be doing to prepare for the new Internet landscape.

After what seems like years of debate, controversy, objections and legal wrangling, the expansion of the domain name world has begun. In 2012, more than 1,900 applications were made to own a slice of Internet real estate, and we are now seeing the dreams of many becoming the reality of the few.

Despite hours of discussion about the fairest way to decide which applications will be made available first, it is domain name registry Donuts that has stolen a march on everyone. The US organisation applied for more than 300 generic terms, including .single, .camera and .email. Having got its house in order faster than anyone else, Donuts planned to launch seven new generic top-level domains (gTLDs) in late November, adding more before Christmas.

Donuts was not the first company to launch a new gTLD, however. That honour went to .shabaka— ‘shabaka’ being the Arabic word for ‘web’—which launched its Arabic internationalised domain name gTLD on October 31, 2013.

While ICANN, the governing body for the domain name world, originally wanted around 20 new gTLDs to launch every week, it is unlikely that many other applicants will have taken the plunge in the weeks before Christmas, preferring to wait until after the festive season and keeping a close eye on what happens with the first Donuts launch.

The delegation and subsequent launch of the new gTLDs represents a revolution of an industry that is more than 20 years old. Until now we have seen one or two new TLDs, such as .co, .eu and .xxx, added every year, but discussions about expanding the number of gTLDs started more than five years ago. ICANN felt that the existing system wasn’t fair to new brand owners that weren’t able to register domain names related to their businesses and intellectual property. Generic, descriptive domain names were changing hands for millions of dollars: insure. com, and all sold on the secondary market for more than $5 million.

Within two years there will be more than 600 new ‘descriptive’ domain suffixes for us to choose from, ranging from .holdings and .lighting to .bike, .hotel, and .discount, as well as the much-anticipated .ninja and .horse. Adding geographic extensions such as .paris, .nyc and .london, and brand-specific TLDs such as .bmw, .hermes and .barclays, you can start to understand why brand owners should now be seriously planning their new gTLD strategies.

The right domain name, or names, is as much a valuable asset to a company as its property portfolio, staff and even customers. For companies that trade online, the right domain name—which may cost only a few pounds—can generate sales of thousands of pounds a minute. Think how much of an investment was when it was first registered back in 1994, compared with today, when the website takes more than $1,000 per second.

A five-minute outage in the domain name would cost Amazon more than $300,000 in lost revenue, but significantly more in bad PR. Return on investment decisions have never been so simple when the right domain name is in question. But what should the strategy be when looking at the new gTLD programme?

"Within two years there will be more than 600 new 'descriptive' domain suffixes for us to choose from, ranging from .holdings and .lighting to .bike, .hotel and .discount."

Research carried out by Microsoft reveals that we tend to favour exact-match domain names when we carry out searches on the Internet. Soif we are looking for a hotel in Paris we are more likely to click on a search result that features the exact keywords ‘hotels’ and ‘Paris’. Unfortunately, such relevant domain names were snapped up years ago, but the new gTLDs mean that the competition for search results will open up again—‘’, ‘’, ‘greathotelsin. paris’ and so on. Google, which has more than 80 percent market share for search, seems to be so convinced that the new gTLDs are a gamechanger that it applied for more than 100 itself.

While the first 11 gTLDs launched in November, applications for second-level domains within these can be made only by verified trademark holders until mid-January 2014. To apply, a rights holder needs to have submitted its trademark and proof of use to Deloitte, which was given the mandate to run the Trademark Clearinghouse (TMCH), to which every new gTLD registry has to connect. The TMCH also offers some rights protection for its users, including a time-bound notification service of any potential bad faith registrations.

What should a brand owner be doing to prepare itself for the new gTLD programme? First it should understand which relevant new gTLDs will launch and when. Knowing the potential domain suffixes that are about to launch will allow you to create ‘must have’, ‘should have’ and ‘like-to-have’ lists.

How can intellectual property be protected? The TMCH means that a trademark owner has the power to decide how it will protect its IP in every gTLD released. In addition, Donuts offers a further protection measure, called the Domains Protected Marks List, which allows a trademark owner to apply a registration block across its entire inventory.

Brand owners should also:

• Review your existing portfolio. With potential attractive new domain names appearing each week, you will need to make some room in your portfolio. Now is a good time to examine what you own, where they are registered and what redirects you have in place.

• Create a domain name strategy document for your organisation. A domain name strategy document can keep all internal stakeholders involved in the management of IP up to date and clear about what the processes and procedures need to be. Remember, domain names can be very valuable so it is important that as much care is taken with them as with other more visible assets.

• Not be afraid to ask for help. Corporate domain management companies such as NetNames have a number of tools that can help you understand what is going on, what you need to do and when. So ask an expert if you don’t understand.

Change is rarely seen as an opportunity, but in the case of the new gTLD programme it is one that savvy organisations should grasp with both hands.

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

This article was first published on 19 December 2013 in World IP Review

new gtlds, icann, .brand, netnames

Trademarks and Brands Online