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.Who .Wants .What

Posted by: Jerome McDonnell on June 25, 2012
Who will win the gTLD battle for .dog?

The dust has settled from “Reveal Day” where The Internet Corporation for Assigned Names and Numbers (ICANN) CEO Rod Beckstrom declared, “The Internet is about to change forever.” We find we’re left with more of an indication of the shape the internet might take in the next few years than a solid sense of now having all the answers.

What was shared is a list of who paid ICANN $185,000 a pop for the opportunity to potentially transform the online landscape. $357 million in application fees later, we also know the words they will use to begin this transformation.

The window to apply for new generic Top-Level Domain (gTLD) names opened Jan 12, 2012 and closed May 30, 2012. ICANN received 1,930 applications for 1,410 different strings, which would run those approved $25,000 for the annual fee, plus technical costs.

More than 700 of these applications involved various overlapping strings. While ICANN assures it will thoroughly vet applicants and choose the best for sought-after strings, if ties arise, we could see some of the various 231 applicants become embroiled in bidding wars.

A few of the hottest strings include:

• With 13 applications: .app

• With 11: .home, .inc

• With 9: .book, .llc, .shop

• With 8: .music, .movie, .blog, .design

• With 7: .store, .ltd, .news, .mail, .hotel, .cloud and .love

There was, perhaps surprisingly, only one application for .beer, but .dog saw three and .pizza four. Strings like .tech and .cpa tied with six and .baby was as popular as .game with five applications. Environmental themes garnered some popularity with four competing for .eco and .green, while two fight for .earth.

Pontificium Consilium de Communicationibus Socialibus (Pontifical Council for Social Communication) filed for .catholics, which will be a closed register. The only other denomination name we saw applied for was .mormon by IRI Domain Management, LLC. The American Bible Society applied for .bible, dot Faith Limited applied for .faith and .christmas was sought by Uniregistry, Corp. Asia Green IT System applied for .halal, .islam and .persiangulf.

It’s also interesting to note:

• Conspicuous by their absence are: Facebook, Twitter, LinkeIn, eBay, the Olympics and The Red Cross. None of these companies appear to have filed for any TLD extensions.

• Google looks to have filed for 101 strings. Amazon filed for 76. The two could face off over 20 different strings, including .music, .movie and .play.

• Microsoft filed for 11 TLDs, including its name and .bing, .hotmail, .windows and .xbox. While Apple applied for just .apple.

• Donuts Inc. applied for the most. It sought 307 gTLD strings such as .art, .blog and .charity, costing the company a whopping $56 million in application fees.

• Although the ANA (Association of National Advertisers) has been an outspoken critic of ICANN’s initiatice, more than 90 of its 500 members ended up applying for a new TLD. Home Depot, Accenture, Dell, Samsung, Allstate and Capital One, for example, all filed for their own names.

• GE had to make do with .GEcompany because of the 3-character minimum requirement.

Instead of processing all applications simultaneously, ICANN will evaluate them in batches of 500, taking approximately six months. Thus it is very possible that some TLDs will be up and running before ICANN has even started reviewing other applications.

The effect this internet expansion will have on brands, trademark protection strategies and domain name portfolios remains to be seen – but brand owners need to be ready. The good news is the published list offers the chance to identify potential risks and benefits to the internet expansion.

Brand owners should immediately review the application list to determine if any of the new TLDs consist of or incorporate their trademarks. It’s wise to see what the competition is up to as well. Note if a competitor has applied to own a generic industry term that could leave other brands at an unfair disadvantage.

Once the list is audited, it is strongly recommended brands be ready to develop a plan to address problematic TLDs. Consider filing objections via public comment (now through August 12, 2012) or legal rights objection (now through January 13, 2013). And be prepared to respond to any objections to applications from competitors.

Watch the developments of the Trademark Clearinghouse, intended to provide limited protections for trademark owners when second-level registrations within new TLDs are available, closely. Deloitte and IBM were announced as the service providers for implementing and managing the Trademark Clearinghouse, scheduled to open in October 2012. Brands will need to decide if they need to register second-level domains in any of the new TLDs that launch as soon as 2013.

The key here is vigilance. The Trademark Clearinghouse, as well as the Uniform Domain Name Dispute Resolution Policy (UDRP), Uniform Rapid Suspension System (URS) and sunrise periods are there to help. The onus to monitor, however, is on the brands themselves.

Rod Beckstrom announced that trademarks “…are country specific, domains unique. The two will never match up exactly.” ICANN has admitted it has put aside approximately $120 million form fees collected to cover any future legal costs.

While we wait and see what the batching/digital archery process brings, we can ponder the following:

• Will Facebook challenge Amazon’s application for .like?

• Who will get .cloud? Amazon? Google? Symantec? Or one of the 4 other applicants?

• Will string confusion objections be filed by .guardian or .theguardian?

• What about .bank vs. .banque? .vote and .voting? .web vs. .webs vs. .website?

• When ICANN promised it was expanding the internet landscape, it wasn’t kidding. We potentially have .apartments, .condos, .realestate, .realtor, .realty, .rent, rentals, .villas and .rightathome from which to choose. There’s also .storage

• Is Kerry Trading Company really looking to own .kerrylogistics or is .logistics what they intended?

• Is the applicant for .dotAfrica looking to own .africa perchance?

• What were they thinking? .online, .rodeo, .ketchup, .spreadbetting, .cleaning, .ninja, .ooo, .boo, .RIP, .dot? And did three different companies really file for .sucks?

The online landscape is set to evolve. A new internet is nigh. .wtf – filed by Donuts, Inc. – indeed.

Jerome McDonnell is Group Trademark Director for Interbrand.

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