ICANN's new gTLD program is now well under way, and registrations are being accepted for domains in TLDs as diverse as .kitchen, .bargains and .ninja.  .london launched on 29 April hot on the heels of a number of other city domains such as .tokyo and .berlin.  But what has been the impact of these new gTLDs, and what (if anything) do you need to do about them?

According to Easyspace, as at 25 March 2014 .guru was the most popular of the new gTLDs with almost 46,000 .guru domains registered.  At the other end of the spectrum, however, Domain Name Wire recently reported that only 22 domain names had been registered in .rich.  .london is predicted to be a popular TLD, not least because of the success of .berlin, but in reality it is hard to know what the take-up of different TLDs will be.  That leaves brand owners in a difficult position when considering how to protect their brands, in particular in setting a defensive registration strategy.

The principle behind defensive registrations is simple: it is cheaper to pro-actively register yourbrand.london than it would be to recover it from a cybersquatter.  When there were just a handful of gTLDs that argument made some sense.  But times have changed.  In addition to the 20 or so original gTLDs and almost 300 country-specific ccTLDs, there will soon be as many as 1,400 new gTLDs, and that doesn't even take into account second level domains or sub-domains.  Defensively registering all possible combinations of your brand is a daunting – and expensive – prospect.  That's even before you consider the escalated costs of registering in sunrise periods or protecting variants or misspellings of your name.  What is more, the new streamlined domain dispute resolution procedure – Uniform Rapid Suspension (URS) – now offers a cheaper method of addressing domain names that are picked up by cybersquatters.

For those brands without the benefit of bottomless coffers, a more tailored strategy is sensible.  Below are a just few factors to consider when determining what approach is right for your brand:

  1. Firstly, and most obviously, what domain names do you actually want to use?  Also, what new gTLDs and/or territories are key to your business?  Domains in these categories should be registered as a priority, and sunrise periods may be helpful to ensure that they are secured.
  2. Who uses your website, and how do they find it (e.g. via search engines or through typing in the URL)?  If customers ordinarily search for your website, your online brand protection budget may be better spent on search engine optimisation and/or addressing trade mark misuse in keyword advertising, as opposed to defensive registrations and/or URS complaints in respect of cybersquatters' websites that your customers may never find.
  3. What damage do cybersquatters' websites actually cause?  Phishing scams and look-alike websites selling counterfeits may be a real problem, whereas parking pages with links to competitors, aimed at earning pay-per-click revenue from those who mistype a URL directly into their browser, may be less so.
  4. Finally, how will you find out about the scale of the problem?  A good online monitoring service should enable you to identify the scale of the problem and tailor your strategy accordingly.

Ultimately, a sensible online brand protection policy should go well beyond just defensive registrations.  It should employ a balance between defensively registering domain names in key TLDs, together with enforcement against damaging cybersquatting and phishing activities.  Strategies will vary from brand to brand – a children's brand may need to take action against cybersquatters hosting parking pages with links to inappropriate content, whereas others may decide that their customers will understand that they typed the wrong address, will not assume that the parking page is operated by the brand they were trying to find, and will not blame that brand for offensive material that they might find there.  There is no doubt that Internet users are becoming more savvy, and online brand protection strategies too need to evolve with the times.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.