In 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) opened the domain name space , offering businesses the opportunity to request the registration of new types of generic top-level domains (gTLDs), including the dotBrands. Several multinationals are beginning to use this new way of marketing their products and services, as evidenced by the launch of sites such as: home.barclays, mabanque.bnpparibas, thepredator.fox and fizzy.axa.

The domain name space has grown rapidly since the introduction of the new rules. In addition to the dotBrands launched in the first series of applications (such as .walmart, .volvo and .netflix), companies also registered new gTLDs with a word or generic term (such as .shop or .wine), geographical names (for example, .london and .nyc), as well as internationalized 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 in addition to pre-existing TLDs (eg .com or .info) and country TLDs (ccTLDs), such as .uk and .fr. Due to the success of the first series, a second series of dotBrand applications is also planned for 2019.

A strategy for domain names

With so many gTLDs and ccTLDs available for registration, it can be difficult for trademark owners to decide which domain names to register for their business name and their major brands. New domains give you more choice as a brand owner, but it's also more difficult to identify the extensions that best suit your customers, and this can expose you to counterfeit risks. For example, should you choose a geographic area (for example, .paris or .fr), or will it limit your market? Should you opt for one of the sector extensions (eg .shop or .green), or wait to see if they become popular? And that' are there extensions that you choose not to register? How can you be sure that a third party will not seek to profit from this decision or forgetfulness?

Domain names are generally inexpensive to obtain or maintain; however, the time and cost of suing third parties who violate your rights can quickly accumulate, as can the loss of revenue and reputation that would result from these sites being able to continue their operations unchallenged. That's why we advise you to approach your domain name portfolio as you would for your other intellectual property assets; in particular: keeping records in a central location with clear management responsibilities; establishing clear processes for registration, monitoring and implementation; and conducting regular reviews to make sure that the portfolio as