In 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) opened up the domain name space, offering organisations the possibility to apply to register new types of generic Top Level Domains (gTLDs) including dotBrands. Several multinationals are now starting to make use of this new way to market their products and services, as the launch of sites such as: home.barclays, mabanque.bnpparibas, thepredator.fox and fizzy.axa reveals.
The domain name space has expanded rapidly since the new rules were introduced. In addition to the dotBrands launched in the first round of applications (such as .walmart, .volvo and .netflix), organisations have also registered new gTLDs featuring a generic word or term (such as .shop or .wine), geographical place names (for example, .london and .nyc), and also Internationalised Domain Names (IDNs) covering different (non-Roman) scripts, such as Arabic, Chinese or Russian. In total, more than 1,300 new domain extensions have been added. This is on top of the pre-existing gTLDs (e.g. com or .info) and country-code TLDs (ccTLDs), such as .uk and .fr. Due to the success of the first round, a second round of dotBrand applications is also scheduled for 2019.
A strategy for domain names
With so many gTLDs and ccTLDs available for registration, it can be difficult to brand owners to decide which domain names to register for their company name and core brands. The new domains give you as a brand owner a lot more choice, but it also makes it harder to identify which extensions will resonate best with your customer base – and can leave you open to infringement activity. For example, should you choose a geographical-based domain (e.g. .London or .co.uk), or will this limit your market? Should you opt for one of the sector-focused extensions (e.g. .shop or .green), or wait to see if they catch on first? And, what about those extensions that you choose not to register – how can you be sure that a third party won’t seek to make a profit from that decision or oversight?
Domain names are generally not expensive rights to obtain or maintain; however, the time and cost of pursuing third parties for infringement action can quickly add up, as can the loss in revenue and reputation from allowing such sites to continue trading unchallenged. That’s why we advise approaching your domain name portfolio as you would your other IP assets; in particular, by: holding the records in one central location with clear management responsibilities; putting in place clear processes for registration, monitoring and enforcement; and, undertaking regular reviews to ensure that the portfolio as registered and maintained is aligned with your trademark portfolio and wider business activity.