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New gTLD Registration Strategies: Preparing for the Inevitable

Elisa Cooper

As we draw closer to the first new gTLD registry launch, many companies are beginning the arduous task of developing their new gTLD registration and blocking strategies. And after speaking with dozens of clients, I can tell you that the planned approaches are ranging from very minimal registration and blocking strategies for one or two core brands, all the way through to registrations of multiple brands in every single new gTLD registry.

Generally speaking, we are recommending that companies look to register only exact-matches of their core trademarks in registries where there is a close correlation between the brand and the TLD. For example, financial institutions should consider registering in TLDs such as .bank, .loan(s), and .mortgage. Identifying these kinds of close matches is easy, especially given that the number of open and restricted TLDs is just under 620.

More difficult to answer for most companies is where to register in non-Latin TLDs. When it comes to non-Latin registrations, we recommend that companies make best efforts to understand how brands are marketed internationally. If they are marketed using non-Latin characters, then consider registering in the new IDN (Internationalized Domain Names) TLDs assuming that there is a nexus between the brand and the TLD. However, we strongly discourage mixing character scripts and do not encourage registering Latin second-levels with non-Latin top-levels.

Companies are also having to make difficult decisions about whether it makes sense to register in any of the city or geo TLDs. In this situation, we ask companies to think about whether they are actively marketing or promoting their brands in these cities or regions.

In addition, there are certain categories of registries which pose their own special risks including gripe (.wtf and .sucks), vice (.sex and .poker), corporate identifier (.inc and .gmbh) and charitable (.foundation and .charity) TLDs — and companies must determine their tolerance for risk when planning their registration and blocking strategies around these.

And finally, there are all of the truly generic new gTLD registries like .web, .blog and .news — and again there are difficult decisions to be made, as there is no one-size-fits-all when it comes to developing a registration and blocking strategy.

At this point we are recommending that companies do their best to understand this new environment and that any strategy developed should provide general guidelines only. Actual registration and blocking decisions should take into account many factors which are not yet known, such as timing, price, special eligibility requirements or RPMs, distribution channels and marketing support.

And as I've mentioned multiple times before, trying to register every variation, typosquat or misspelling in this new environment as a method for protecting brands will be cost prohibitive. Policing for abuse and taking action where it makes sense will be key to identifying and addressing abuse.

By Elisa Cooper, SVP Marketing and Policy at Brandsight, Inc.
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Related topics: Domain Names, Multilinguism, New TLDs
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Why should ... John Levine  –  Sep 27, 2013 2:08 PM PDT

companies register their trademarks at all, rather than putting them in the TMCH and blocking them across all new TLDs?

Depending on the particular brand, I do Elisa Cooper  –  Sep 27, 2013 2:51 PM PDT

Depending on the particular brand, I do think that Blocking will be a good option for companies. That said, I do not expect all registries to offer Blocking as an option.

When blocking is available... Kevin Murphy  –  Sep 28, 2013 4:25 AM PDT

Elisa,

Are you recommending blocking services such as Donuts' DPML?

Following your logic above, a brand may want to defensively register or block in a small subset of a portfolio registry's TLDs, but there may not be an option to do that. They'd have to block across all the TLDs or do Sunrise in selected TLDs.

Would it be a purely mathematical/financial decision, or would other factors come into play?

Kevin

If you are one of those companies Elisa Cooper  –  Sep 30, 2013 9:59 AM PDT

If you are one of those companies which is planning to registry broadly in an effort to thwart abusive registrations, then submitting marks to the DPML may make a lot of sense financially, given that Donuts intends to operate nearly a third of all open registries.

Keep in mind that submitting to the DPML will not block registrations by other trademark owners, so registering trademarks as domains may make more sense in some cases.

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