How to Feel About the "Big Reveal": Roundup on the Land Rush for New gTLD Applications
Saturday, June 16, 2012
The curtain has been drawn back and the applicants and applied-for strings of new gTLDs have taken center stage this week. Ultimately, the "Big Reveal" exposed what many had long speculated, namely, a fair number of large brand name businesses applying for their namesakes (such is the case with .apple, .nissan, .mcdonalds and .fedex) as well as a number of enterprising companies applying for a slew of generic strings (including .apps, .pizza, .phone, .restaurant, .baby and .love). In total, ICANN released 1930 applications representing applicants from 60 different countries - a veritable cornucopia of new domain strings making for a whole lot of gTLD .company for a lonely .com.
The greatest revelation may be, largely, what isn't there at all. A handful of big name brand owners were conspicuously absent from this week’s rollout roll-call including, for example, .facebook, .disney, .twitter, and .cocacola.
Also missing were any obvious attempts of entities to trespass upon any significant brand names. Even bulk applicants, such as Donuts Inc. (who racked up a total of 307 applications), managed to stick primarily to generic terms – likely as a business strategy to sell the largest number of domains to the greatest number of Registrants and parlay their $100 million dollar investment into something bigger. The jury is still out regarding the success of such endeavors.
For the many big name players in the new gTLD space, there have been clear attempts to corner the market on brand identifying marks, products and services by applying for dozens of strings bearing their names and signature marks. In general there appears to be a fairly sizeable presence by companies in the tech space – many of whom find themselves in muddied waters, having applied for overlapping domains with other organizations. In a veritable clash of the techy titans, several large name entities have all applied for a number of identical strings, including .app (the most sought after extension by all except, interestingly, Apple), .blog, .cloud and .docs. Other popular strings include .art, .book, .home, .inc, and .shop, with additional heavy hitting industries including those in the fields of automobile, banking, insurance, retail, manufacturing and pharmaceuticals. All in all, ICANN has indicated that there are 231 domains with competing applicants which ought to make for some interesting rivalries.
So, the question remains – where do brand owners go from here?
A few strategic considerations to bear in mind when reviewing the published list of gTLD applications:
Review. Review. Review. - Be sure to examine the list.
Prioritize Concerns - Identify any strings that may be confusingly similar to your brand.
Spotlight Interests - Pinpoint any generic gTLDs that are within your relevant field or are otherwise of interest. Consider brands and industry spaces that are particularly relevant to your brand and field.
Evaluate the Competition - Gauge what your competitors are doing.
Consider the Applicants - Are They Notorious Cybersquatters? Have you previously sent demand letters to these entities?
Budget - Prepare a financial and strategic plan for how much you are willing to invest in either pursuing potential brand infringers or new domains within a generic gTLD.
Consider commenting on an application and/or formally objecting to an application.
Erin Hennessy is a partner in Bracewell's Technology Group and is the head of the firm’s Trademark and Copyright practice. Her practice focuses on trademark law, copyright law, and internet and social media issues spanning many industries including media, publishing, technology, retail, fashion, and financial services. Having served as a former chief trademark counsel in-house, she brings an innate business sense and first-hand insights to her practice.
Erin counsels clients on all aspects of IP with a particular emphasis on supporting legal,...