Many of us will remember the start of the first ICANN new gTLD process, which saw around 2000 separate applications to own new domain spaces. The impact enabled end users to expand their registration horizons beyond the limited extensions of the time, such as ‘.com’ and ‘.org’.
This article looks at (i) initial discussions on a new wave of gTLDs, (ii) recent developments following the ICANN 69 meeting and (iii) a few ways in which brand owners can address new domain extensions going forward.
New gTLD Round
It is unclear when the new round will officially launch, but discussions have taken place by groups such as the ‘New Generic Top-Level Domain (gTLD) Subsequent Procedures Policy Development Process Working Group’ (‘SubPro’), with the aim of outlining who can apply, how to apply, fees and other terms and conditions.
Since the early stages of the process, many reports - discussing over 40 topics – have been circulated. This will impact the new release. Since 2016, SubPro has posted reports for community engagement, such as the ‘Initial Report for Public Comment’ (July 2018) and the ‘Supplemental Initial Report’ (October 2018). Many parties engage with these reports, particularly those in the domain industry, such as registries, registrars and organisations such as WIPO.
Highlights of ICANN 69
The most recent discussions on the subject have come out of the recent ICANN 69 meeting. Most discussions related to public interest considerations such as:
· Closed Generics – this only relates to a small number of extensions released to date (most of which refer to .brand domain names). For the new round, the aim is to balance how to treat closed generics in line with the public interest.
· Public Interest Commitments (‘PICs’) – the impact that ICANN’s bylaws has on PICs, particularly surrounding content-related issues and additional clarity around framing public interest in relation to the Public Interest Commitment Dispute Resolution Procedure (‘PICDRP’), an already established policy to complain against registry operators.
Further discussions are likely to be featured at the next ICANN meeting (ICANN 70), which is expected to be held in March 2021.
New gTLDs - Practical Implications and How to Prevent Abusive Domain Registrations
For some, the evolving domain landscape is an opportunity for creativity and investment. However, for brand owners, it is arguable that having too many domain extensions is a curse, as it increases the likelihood that cybersquatters who may register domain names, incorporating their rights (e.g. trade marks). On the other hand, if brand owners were to register their rights for all new extensions, this will bloat their domain portfolio and will be very expensive to maintain.
i) Trademark Clearinghouse
One useful mechanism, which brand owners can already utilise to prevent abusive domain registrations, is the Trademark Clearinghouse (‘TMCH’). This mechanism gives brand owners priority when registering new domain names and provides an alert if third parties register one of the new extensions with the same term. As with the 2012 round, we can expect many to utilise the TMCH when the new wave is launched.
ii) Domain Policy and Management
Other than mechanisms like the TMCH, a watertight domain registration policy and online brand protection programme will serve brand owners well in combatting any domain registration, be it now, or when it comes to the next registration wave.
iii) .Brand Domain Names
Another option is to utilise the ‘.brand’ extension as a clean channel. To date, ‘.brands’ have only been used by a select few companies, such Gucci and Barclays, which enable a brand to have control of the full URL, not just at the second level e.g. brand.com. Having ultimate control also has the added benefit of allowing consumers to spot the right website. On the other hand, brand owners will still need to monitor the evolving landscape, in case other extensions are registered.
At Stobbs, we have a team of highly knowledgeable experts in the field of domain names. If you require advice about domain name management, please contact us via email@example.com