gTLD’s and Copyright

A gTLD is a general top level domain name or basically what you call a website. For instance, is a domain name and it is the top level domain as opposed to one of the subsets of history channel that has more targeted content. Since the internet has caused so many things to change that we did not plan for, IP is trying to catch up on copyrighting and protecting branded domain names.

Researching our cover story (subscription or trial
required) on how to protect trade marks in the new gTLDs, I
spoke to few brand owners who were enthusiastic about
Icann’s new gTLD programme. As Sarah Deutsch of
Verizon (who is chairing a session on new gTLDs at the INTA Annual Meeting this month) put it:
“If people are registering at all, they’re doing
so defensively.”

Even with the new tools available to protect trade
marks – such as the Trademark Clearinghouse, URS and operator-specific mechanisms such
as the DPML – combating cybersquatting is
expensive, time-consuming and unpredictable. And
that’s before you consider the proposed .sucks domain. No wonder many in-house
counsel observe the whole programme with something approaching

Yet for some trade mark owners (about 600, in fact)
this round of the programme is an opportunity to establish a
new web presence, using their brands as gTLDs. In the article
in this month’s issue, we profile Monash
University’s .monash, the first branded gTLD to go
live under the programme. Ian Tebbett, chief information
officer at the University, described the new domain as
“brand-reinforcing” and said it gives the University more
control compared to other domains.

Among the many other brand owners who have applied to
run gTLDs in this round are Alibaba, BBC, Fox, HSBC, LEGO,
Richemont, Samsung and Yahoo. Few have revealed much about
their plans yet, but as their domains role out over the next
two years, I expect we will see some innovative businesses
emerge as brands capitalise on the recognition, trust and
security that a proprietary domain name offers. There are
already rumours about the clever things Samsung plans to do
with its Korean-language gTLD.

Moreover, .brand applicants won a significant
concession at the Icann meeting in Singapore last month, with
agreement on so-called Specification 13, which provides important
safeguards for closed registries. These include allowing them
to have only one registrar and providing a two-year cooling off
period before an expired gTLD is re-delegated. Martin Samuel of
HSBC, who chairs the Brand Registry Group, told me the
developments in Singapore were “really positive”. They could
even lead some brand owners to expedite their gTLD

While the
immediate beneficiaries will be the applicants in this round,
the changes will also please those who apply for a .brand gTLD
in the next round – and there will be a next round,
probably in 2016 or 2017 (see our interview with Icann’s Akram
, (right)). In fact, some people I spoke to told me
they expect most of the applicants in the second round to be
.brand domains, with the number of .brand applications being
counted in the thousands rather than hundreds. These applicants
will benefit from more certainty, more consumer awareness and
quite possibly lower costs.

Once consumers begin to use and recognise branded
domains, it may become safer to have one than not. Ultimately,
then, brand owners could be the winners from the gTLD