By Trevor Little
June 12 2012
Tomorrow ICANN will finally reveal the full list of gTLD applications – making it the perfect time to review what we know and consider how the list should be approached.
While tomorrow is the full reveal date, a number of companies have pre-announced their applications over the past few weeks, perhaps in a bid to grab the headlines now, rather than being lost in the mix once the full list is announced.
On Domain Incite, Kevin Murphy reports that a new company run by ICANNWiki founder Raymond King and business partner Peter Brual has applied for: ‘.blog’, ‘.llc’, ‘.group’, ‘.wiki’, ‘.gay’, ‘.art’, ‘.style’, ‘.design’, ‘.ink’ and ‘.photography’, while a second company has unveiled its intention to apply for ‘.corp’. On WTR’s sister title Intellectual Asset Management, Joff Wild reports on one of particular interest to trademark owners, Momentous Corporation’s application for a ‘.sucks’ gTLD (alongside ‘.design’, ‘.style’ and ‘.RIP’). ‘.sucks’ is intended to “provide a medium for sharing opinions and encouraging debate”, albeit likely the negative kind given the string. For trademark owners, used to monitoring gripe sites, it is certainly one to keep an eye on.
Elsewhere details have emerged of applicants and their strategies, if not the specific strings applied for. Yesterday Demand Media announced that it is pursuing a portfolio of gTLDs, selected according to “a proprietary, data-driven methodology… [which selects names] in categories connected to an extremely broad range of interests and capabilities including: e-commerce, personal and professional identity, education, entertainment, internet life, sports, small business and social media.” The company has applied for 26 gTLDs itself, and also partnered with Donuts Inc, an Internet domain name registry, on 107 applications.
Meanwhile, Uniregistry Corp, a new registry services company, stated that it too was in the game, partnering with Internet Systems Consortium Inc and applying for domains that “will better serve the internet community by providing strong semantic tiesbetween a registrant's interests or business and the selected domain name”.
Afilias, the operator of the ‘.info’, ‘.mobi’ and ‘.pro’ TLDs, today revealed that it was supporting 305 gTLD applications: “The applications span a range of new TLD ideas, and include 18 internationalised TLDs (eg, Chinese and Cyrillic), four community domains, four geographic domains and more than 170 ‘.brand’ names. The remaining applications represent a wide variety of generic domain strings that are designed to simplify internet navigation by helping users discover focused, easily identifiable content.”
Brand owners have also signalled their own intention to apply for generic terms alongside their brand names. Google, for instance, is applying for around 50 gTLDs, with terms like ‘.lol’ and ‘.docs’ accompanying the expected applications for ‘.google’ and ‘.youtube’.
Such announcements suggest that the battlefield for ‘.generics’ will be fierce. This is a sentiment backed up by Jonathan Robinson, non-executive director of Afilias, who told WTR: “What’s fascinating is that it is starting to look like an even balance between generic terms and brand based terms, so the market is well-poised between those that wish to exploit brand equity and those that want to create new descriptive areas of internet space. The issue with more descriptive terms is that there is going to be contention, and this is clearly an issue that won’t be as straightforward as some assume. ICANN hopes there will be discussion prior to terms going to auction, and a critical challenge is to manage the whole process effectively.”
For those watching the process, once the full application list is released, what should be the action plan? Considering applicants, Robinson advises: “The first thing to ask is ‘am I unique?’. Second is ‘has anyone applied for anything I might object to because it may be confusingly similar to my applied-for string?’. Third, in instances where it will be hard to argue that an application is confusingly similar or potentially infringing, ‘is there a necessity to go out and negotiate – to try to do a commercial deal if the application looks like it has a good chance of going through?’. Of course, the possibility of contention takes many forms – there is algorithm checking but there are other means. The GAC can object. Applicants can object. So you also have to think about how others may view your application. Do you need to reassure others about your intentions? You need to look in both directions.
“The second step, after all that – if all seems OK – is how you are going to navigate the next six to 12 months. Everyone should have selected a registry services provider but, if you haven’t already, you need to look at how you will get the new gTLD to market – including policy, processes and ethical considerations. One of the things this process has created is a rise in the number of service providers, to varying degrees of depth, credibility and financial stability. Review who you are going to be working with. It really is never too soon to start planning the process.”
Of course, applicants are not the only interested party. Yet, while many brand owners and trademark counsel will be keen to check over the application list, recent studies – including the recent Global Benchmarking Survey carried out by WTR and the IP Solutions business of Thomson Reuters – suggest there is still a degree of uncertainty over how the new online landscape will impact online strategies, and varying degrees of preparedness for the change. Robinson stresses: “This really is a massive change to the landscape. The historic ways brands have dealt with the online space are various, but the opportunities and tools are changing so you need to be well-briefed on this and consider your strategies. The classic use of the UDRP, cease and desist letters and defensive registrations may need to be reviewed. For instance, defensive registrations may no longer be viable for some brands, or they may require a variation of strategy. A strategy of, say, blocking 100 terms in only the top 10 online suffixes may no longer be appropriate. This isn’t the death of the defensive registration, but there are changes. Formulating new policies and strategies is very important.”
With the comment period due to open for 60 days (until mid-August) and formal objection period for seven months (to mid-January), there is no need to rush a response to tomorrow’s announcement, but clearly the time to plan ahead has come.
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