Trevor Little

With gTLD sunrises now launching on a regular basis (the official list is available here, while the European Domain Centre maintains a handy infographic estimating the sunrise launch dates for all new gTLDs here) trademark counsel should now be in the process of reviewing their online strategies. WTR previously wrote about the need to assess which gTLDs are of most relevance to your brand, whether for marketing/promotional opportunity or two defensively register in. One industry expert has outlined a data-based approach that can be undertaken.

As noted in our previous analysis, a natural way to approach the list of strings is to consider factors such as industry-related and geographic strings, as well as religious and charity-related strings. While this can be approached intuitively by scanning the list of strings, Vincent D’Angelo, director of global brand advisory at CSC Digital Brand Services, suggests that a more scientific approach should be the basis of this analysis: “We recommend that our clients start by working out which gTLDs they need to be thinking about. And the best way do this is by looking at the data. First, find out how people search for your brands. For example, if they use the word ‘salon’ as a keyword, then this is probably a new gTLD you should prioritise. Then, take a look at your entire domain portfolio and find which, if any, match the new gTLDs. If you’ve got a domain name that includes the word ‘app’, for example, it’s possible that cybersquatters might go after ‘yourbrand.app’, causing problems for you when this new domain goes live… Finally, rights owners need to consider whether their brands - or the new gTLD terms they are interested in - have been involved in disputes. Are they popular, or frequently targeted by cybersquatters? Once a brand holder has done this exercise, it will have created a prioritised list of new gTLDs from the hundreds available and will be able to look at them in order of relevance.”

Armed with this, he suggests that further steps, via a qualitative assessment, can be taken to ensure that there are no gaps in the online strategy. For instance, in addition to looking at gTLDs that others have expressed an interest in, adult and grip sites may merit defensive registrations. Additionally, “domains relevant to your corporate presence should be considered, for example ‘.careers’ or ‘.news’. And geographic gTLDs - whether, say, the Chinese version of ‘.com’ or the domain of a city where a brand makes great sales - shouldn’t be overlooked, either”.

With this priority list completed, the registration and blocking strategy can begin and D’Angelo argues that the strategy employed should be aligned to the existing online policy rather than treated in isolation: “As you prepare your new gTLD game plan, it’s also important to look at how your brands are represented in the current digital landscape of TLDs like ‘.com’ and ‘.net’ and country domains like ‘.cn’ or ‘.fr’. This may mean simply assessing your key ‘.com’ typos, country-code domains and social media handles, or could involve establishing more advanced monitoring and enforcement programs to remove malicious web properties that are diverting traffic and business and causing other harm to your brand and consumers. Taking a holistic approach ensures that your brand presence is optimised as you begin to invest in new domains.”

Crucially, it can also allow you to review the way existing resources are deployed and potentially make cost savings on existing activities which can be re-directed to efforts in new gTLDs. WTR previously considered the budgetary dimensions of adapting to the online expanded world and a natural question to ask is just how long the likely priority list could be. Having run such analysis for clients, D’Angelo states that, on average, around 14 out of approximately 600 unique new gTLDs are generally included in the ‘very high’ risk/opportunity category. He adds: “Even when we add the qualitative assessment, the average is 40 TLDs.”

Of course, in terms of registrations, the precise number desired (and subsequent cost) in each of the identified strings will depend on a number of factors, including the number of variations sought. However, this analysis will enable a stepped approach to what can seem a vast universe of expanded domain names, with D’Angelo further counselling clients to focus on the top ten 10% of the new gTLDs that will impact their brands the most. “This ultimately translates into cost savings by heading off future infringement issues while avoiding misguided registration and blocking strategies.”

Additionally, it will help companies avoid being duped into over-spending via scams or misleading advice: “As with any ‘goldrush’-type situation, disreputable companies will try to exploit people’s incomplete knowledge. In this case, they’ll do it by offering spurious pre-registration programs and suggesting that people take immediate action without having the time to think about it. Yes, there’s urgency around new gTLDs - but it pays to take a measured look before you leap.”

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