The authors of every successful business strategy know that a company must protect its trade marks and its brand from the outset. The primary means of doing so is to register trade marks in each of the territories in which the company does or intends to do business, but the ubiquitous nature of the Internet and its minimal barriers to entry make protecting a mark online seem like a much more difficult task. And while ICANN’s introduction of 1,200 new top-level domains (the string to the right of the last dot in a domain name, commonly referred to as “new gTLDs”), has significantly expanded the domain name marketplace, it has exponentially increased the opportunities for cybersquatting and for consumer confusion. All of this might make a cash-strapped start-up despair that it will ever be able to protect its brand online.
But with a bit of research, some judicious allocation of resources and a commitment to take action where it is warranted, every company can successfully navigate the world of new gTLDs.
In this overview, we will look at the cost-effective ways companies can obtain their new gTLD domain names and protect their registrations.
Some companies ask whether they should embark upon a program of “defensive registrations”, registering all of their trade marks in every new gTLD solely in order to prevent others from doing so. For the vast majority of companies, that is neither a good nor a necessary use of resources: cybersquatters will still be able to register misspellings of defensively-registered domain names, and the annual cost to renew such registrations (at least $10 per year per domain name) makes this strategy prohibitively expensive for most companies.
The better option for most companies is to review the list of available gTLDs and identify a smaller number of domains on which to focus resources. For example, some gTLDs are specifically intended to be contextually relevant to the content provided on their corresponding websites, suggesting, for example, that registrants are part of the entertainment industry, are photographers, or that they operate from a particular location. A full list of new gTLDs open for registration is available on the ICANN website and is updated frequently so should be checked periodically. The key is to ensure that companies register their names in only the most relevant gTLDs, either because they are likely to be used or because they present the greatest risk of cybersquatting. By adopting this more targeted approach, brand owners leave a greater portion of their resources for other brand development initiatives, including responding to infringements if and when they occur.
As noted above, registering a brand in one gTLD does not stop cybersquatters from registering that brand in a different gTLD, or even registering a misspelling of that brand in the same gTLD: no strategy is anywhere near 100% effective and some measure of infringement is, unfortunately, unavoidable. The best response to any such actions will depend on your own circumstances, but it will typically involve a combination of the following proactive and responsive actions.
Fortunately for start-ups, successfully navigating the online world does not depend on throwing a lot of money at a problem. What it does require is diligent record keeping, thoughtful planning, and a realistic commitment to taking decisive action when it is necessary. With those three straightforward actions, start-ups can embrace the opportunities afforded by ICANN’s new gTLD program.