As brand owners await ICANN’s imminent launch of various new generic top-level domain names (“gTLDs”), of which I have discussed here and here, they should be reviewing and, if necessary, revising current domain name policies to meet anticipated new challenges. Below are six actions brand owners can take right now to ready themselves for the potential deluge of hundreds of new gTLDs.
1. Determine annual budget. How much funds are being allocated for reserving domain names that point towards active sites or redirect to active sites, may be used in the future and are pure defensive plays (those domain names reserved for the purpose of keeping them out of the hands of cyber squatters and Domainers)? Then plan accordingly.
2. Conduct periodic audit of domain name portfolio. An audit should determine which of your current domain names could be dropped due to little or no activity. If there’s little or no activity on certain sites, than those domain names would have little or no value to cyber squatters anyways. Consider letting those go.
Maintain those .COM – and possibly those .BIZ, .NET, .INFO and country code - domain names that correspond to common misspellings of brand names (consider new devices on market and what typos are being made), key brand names in key territories, generic product names (i.e., runningshoes.com for running shoe company) and potentially damaging sites such as yourtrademarkSUCKS.com. .COM domains are still the most coveted of gTLDs by Domainers and cyber squatters. I suspect that cyber squatters would prefer NIKEapparel.com to Nike.gardening or FORDvehicles.com to FORD.movies. Wouldn’t you agree?
Add new domain names that correspond to newly adopted gTLDs that are likely to result in misdirected Internet traffic and potential lost profits. For example, automakers should reserve domain names that correspond to .AUTO, .CARS and .TRUCKS gTLDs. However, I really can’t think of a reason why auto manufacturers would want to allocate funds to reserve domain names that correspond to unrelated gTLDs, such as Toyota.food and Ford.gardening? For most companies, those funds should be allocated to enforcement activities.
Also, as new brand names are launched, reserve priority domain names that correspond with those new names. For those brands that go to the graveyard, consider allowing those corresponding domain names to expire in due time.
3. Establish policing policy. In addition to compiling a healthy domain name portfolio, brand owners must also actively police third party registrations of potentially harmful domain names. A global watch program can cost thousands of dollars annually, so plan accordingly if such a service is desirable. Alternatively, brand owners can opt to conduct periodic in-house searches.
4. Establish consistent policy for enforcing brands. Create a policy for taking action against third parties that reserve potentially harmful domain names. The policy should be detailed. Determine in advance – outlined in policy – which “infringements” warrant action. When a credible threat is detected, take quick and decisive action. However, pick your battles.
5. Don’t overprotect. Brand owners simply cannot reserve all domain name permutations. It’s just too costly. That will become more evident as new gTLDs are launched. A better approach is to combine a healthy domain name portfolio with consistent monitoring and enforcement.
6. Take a deep breath and relax. For most brand owners, the launch of new gTLDs will likely go unnoticed. For those same brand owners, there will likely be bigger fish to fry.
Stay tuned as I'll be reporting from Boston May 22-26 at this year's International Trademark Association conference where we're expecting over 8,000 trademark attorneys from around the planet to gather to make new friends, business relationships and memories. New England, I'm coming home!