Winning hearts and minds of brand owners


Stuart Fuller

Winning hearts and minds of brand owners

Brand owners should not miss out on the great opportunities presented by the new gTLD programme, says Stuart Fuller.

It has been nearly 15 months since ICANN announced the applicants for its new generic top-level domain (gTLD) programme to a waiting world of interested parties. While some brand owners had an idea of the opportunities and threats this radical change to the Internet would bring, the vast majority of business owners and Internet users had no idea what to expect.

Today, we are all still waiting for the revolution of the Internet we have been talking about since ICANN announced that the Internet name-space would change more than three years ago. The dawn of the new Internet age is still very dark.

However, the latest signs from ICANN are that it is almost ready to start the engine on the programme. At its conference in Durban in mid-July, the critical path for the first gTLD to be released was outlined, mentioning a date of late August for the commencement of delegation into the root-zone of the Internet. While there still may be a lot of debate and anticipation as to who will be the first TLD applicant to be ready to launch, many doubters will not be convinced that the programme will ever see the light of day, based on previous legal and technical challenges we have seen while getting to this stage.

The delay in the commencement of the programme should have been a godsend to brand holders who were still unsure exactly what was expected of them and how they could take advantage of this once in a lifetime reset of the Internet.

One major step forward with the programme was the introduction of a single verification authority for trademarks, to be used as an authoritative database for all TLD registries to connect to. The Trademark Clearinghouse (TMCH), managed by Deloitte on ICANN’s behalf, would also offer some initial elements of brand protection for trademark holders. While initially heralded as a massive step forward for brand holders in the perennial fight against bad actors who seek to profit from brand abuse, soon it was being criticised for not offering any long-term protection. 

"Brand holders should be looking beyond the short-term deficiencies of the programme and planning their strategies to take advantage of the biggest reset of the internet we have ever seen."

The latest statistics from Deloitte on the TMCH, announced during the ICANN meeting in Durban, show that it has so far received only 5,900 records from just 800 trademark holders. That means some very big brands are either unaware or not prepared in the slightest for what is about to happen.

It is quite possible that some brand holders are taking a wait and see approach to protecting their critical digital assets, deciding not to take any action until ICANN finally get its house in order. 

While the risks to brands are all too clear to see in terms of simply not being able to protect their marks across all of the 1,500-plus new domain suffixes, they are far outweighed by the opportunities that this programme will bring. Brand holders should be looking beyond the short-term deficiencies of the programme and planning their strategies to take advantage of the biggest reset of the Internet we have ever seen.

One of the main objectives set out by ICANN at the launch of the gTLD programme back in 2011 was for business owners to be able to have more control over their online brand assets.

The rise in cybersquatting, phishing, online fraud and digital piracy had caused many brands to sustain significant damage to their revenues, customers, web traffic and ultimately, reputation. By allowing companies to register their relevant IP across a number of key sector, geographic and descriptive terms, they will be able to significantly reduce the risk of damage to their critical digital assets.

Companies will soon be able to start differentiating their products and markets through the use of the new TLDs. Organisations with global operations will be able to have .london, .paris, .nyc and .wales TLDs. Companies that use the Internet as a major channel to market can own their own .shop, .store and .web domain names.

The 100-plus Internationalised Domain Names (IDNs) and transliterations will open up some of the biggest online markets for brands. Millions of new Internet users who do not use a western keyboard, for instance, will be able to use local language equivalents of .com when the suffix launches early in the new programme.

One novel opportunity will be for companies to take advantage of dot move domain suffixes, which enable a company to split its name with a new TLD. For example, NetNames Group can become Barclays Bank can become and Sky News can register

Some new gTLDs will be open only to certain key demographics or verticals. The .bank TLD, while currently in contention (two different parties applied to run the suffix), will require any domain applicant to provide its banking licence credentials.

The .secure domain name will only be available to organisations which can demonstrate enhanced levels of security on their networks, which includes stringent vulnerability and penetration testing, in return for an annual fee somewhere in the region of $10,000. But these will gain almost immediate authenticity, acting as the ultimate online brand protection in a sector that is beset by bad actors.

With the intention of up to 20 new TLDs being launched every week once the programme reaches critical mass, it will be incredibly hard for any brand owner to see the wood for the trees. The current calm before the storm should be used to understand what new suffixes are most important for a business and where the white space opportunities will be for a brand owner.

Combined with pruning existing names, significant thought should be given to what are the key new gTLDs for a brand to register. Opportunities such as this for brand owners do not present themselves very often and it would be foolish not to grab it with both hands. 

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

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

GTLD, domain, brand owners, ICANN, IDN, TMCH,

Trademarks and Brands Online