Feature By Bruce Tonkin Preparing for change – establishing a domain name strategy for the gTLD regime Changes to the domain space have prompted • the growth in personalization of services – the more speculation about the potential threat to brand personalized the service, the more loyal the customer, which owners, yet many have still to review their domain means that brands need to use languages and language sc ripts name strategies to reflect the new online landscape. that meet the personal preference of customers. So where should they begin? The growth in the number of users of the Internet, and the number of businesses using the Internet to sell to and communicate with those users, means that online branding at every opportunity will take on increasing importance. This year marks the 25th anniversary of ‘.com’. Dramatic changes have taken place across the Internet in the past quarter of a cen tury Start with a list and, rather than heading into maturity, it is still undergoing a rapid The approach of registering major brands at the second level of all evolution. What this means for IP managers and owners of domains gTLDs and ccTLDs is not sustainable as more TLDs are in troduced, is that their domain name management strategy must evolve as well and is usually unnecessary for the majority of brands. The starting – not just with changes at the top level of the hierarchical domain point for developing a domain name management policy is name system (DNS), but also with underlying changes in how therefore a written brand strategy that sets out the major brands for consumers access and respond to information. a company and how these brands should be used. However, at While brand owners are being urged to prepare for the present, many organizations lack written policies outlining the forthcoming changes, for many the difficulty lies in identifying the domain names that should be registered for their core com pany industry changes that will drive domain name strategies going brands and the names that should be registered for short-term forward, and how to implement a strategy now which is flexible marketing initiatives. enough to take future changes into account. A sound domain name management policy will consider the The evolution of the DNS, with increased numbers of generic strategic registration of select keyword domains and common top-level domains (gTLDs) and country-code top-level domains misspellings of the key brand names in a major domain name space (ccTLDs) – as outlined in the box on page 85 – has occurred such as ‘.com’, and no registrations at all in a very focused domain alongside the proliferation of users and devices that connect to the name space with tight registration rules such as ‘.aero’. Internet at an incredible pace. These global trends are also h aving a A key element of the policy should be the measuremen t of user direct impact on domain name management strategies and include: traffic and behaviour for existing domain names in a portfolio , • the growth in mobility of people and the a vailability of which can be used to determine which names are no longer needed broadband wireless bandwidth in most major cities, which and which other names should be registered based on estima tes of means that users are more likely to access the Internet with potential traffic. small mobile devices; • the growth in the number of online channels to market for Why diversify? goods and services – including the connectivity of televisions Many companies have adopted the use of one pr imary domain and gaming consoles to the Internet – which means that brands name, which is optimized for access by search engines. This name is need to advertise and be present in many different online usually a major gTLD (eg, .’com’ or ‘.org’), or a major ccTLD (which forums; tends to be used where a company predominantly provides its • the growth in social networking – including in the over-35 services within a particular country). All content is then generally demographic – which means that brands need to be able to managed as sub-directories within the website referenced by the engage in such forums to interact with their customers; primary domain name. All other domain name registra tions tend to • the growth in the middle class (that are purchasing goods and be registered for brand protection purposes and are sim ply services online) in countries such as India and China, which redirected to the primary website, and not directly used in any means that brands must target their messages for different online or offline marketing. customer needs to exploit the growth; and This works quite well where most users access content via a www.WorldTrademarkReview.com August/September 2010 World Trademark Review 83 Feature: Preparing for change – establishing a domain name strategy for the gTLD regime There has been concern that additional top-level domain names will substantially increase the risk associated with online brand protection. However, the facts don’t support this. The risk for a particular TLD is related to both its popularity among registrants and users, and the cost and ease of registering in the namespace search engine and are referred to the w eb page that is most relevant Getting defensive to the user. However, if the results show a long domain string typical In addition to the registration of domain names for direct of a sub-directory within a website, it can deter users. A significant commercial benefit through proactive use of the names in online number of users scan the domain name displa yed in search results and offline advertising, organizations need to assess their strategy for to decide whether they trust the result enough to click through to deciding which domain names should be proactively registered to the relevant website. reduce risks to a brand and what steps should be taken to monitor A primary brand strategy can also limit marketing effectiveness. registration and use of related domain names by third parties. Providing an easy-to-remember domain name to access directl y the It is well known that domain names are misused by parties th at desired content without having to navigate through a complex seek to trade off the brands and repu tations of well-known primary website to find the content is a key consideration, especially organizations – either through malicious approaches such as for offline advertising purposes. This is what has essentially driven phishing and malware or through earning money from pay-per-click the popularity and market price of generic domain names. advertising that is related to the organization (including advertising Examples of how domain names can be used in differen t forums competitor products). However, there are also many legitimate uses include the following (these are simply examples and do not of domain names by third parties that relate to the brands of indicate the plans of any companies mentioned below): organizations. • Media-specific names such as ‘bmw.tv’ suit consumers that like Whereas a domain name is globally unique, company names and to view videos of cars as part of their decision-making process trademarks are not. The same trademark or organiza tion name may and also suit access from mobile devices where a short, simple be registered to different organizations operating in different name is easier to remember and enter into the device. categories of business or different countries. So while gTLD and • Abbreviated names for use in social media interactions such as ‘t.co’ ccTLD managers have been progressively improving protection suit use in services such as Twitter or text messages, where only a against misuse of domain names – through processes for dealing limited number of characters are available within a message. with phishing and malware, and dispute resolution processes for • Geographic-specific names such as ‘coca-cola.com.cn’ allow trademark disputes – there is nothing stopping legitimate use of delivery of content that is relevant to users in that area, domain names that may match an organization’s brand. displayed in the local language. There has thus been concern that additional top-level domain • Language-specific names such as ‘ .com’ (‘xn--zfvo28e.com’ – names will substantially increase the risk associated with online translated as ‘travel.com’ in Chinese) are also available, although brand protection. However, the facts don’t support this. The risk for a few major brands currently use domain names in particular TLD is related to both its popularity among registrants and internationalized formats. internet users and the cost and ease of register ing in the namespace. • Category-specific names can provide additional information Since the introduction of new gTLDs in 2000, data shows that about a company’s activities – for example, ‘<motor-company- most of the risks (and related domain name disputes) still occur in name>.sport’ could highlight a motor company’s involvement in the pre-existing domain name spaces – ‘.com’ is both the most motor sport, while ‘<company-name>.charity’ could provide popular domain name space and the easiest to register in, posing the information on how the company provides support for charities greatest risk from a brand protection point of view. Many of the new (something that would generally be difficult to find from a gTLDs have not achieved widespread recognition, so users are far less primary company website or by using a search engine). likely to click through to an unfamiliar domain name type. • Brand-specific names such as ‘drink.<drink-brand>’, ‘diet.<drink- In addition, some of the new gTLDs have more restrictive brand>’, ‘<car-brand>.<carcompany>’, ‘testdrive.<car-brand>’ and registration processes (eg, ‘.travel’ or ‘.museum’), which discourage ‘stayat.<hotel-chain>’ allow memorable use in offline advertising misuse.