Prepare for an Expanded Digital Battle Ground
Wearing down the enemy by making it cover many fronts is a classic tactic of warfare (see Sun Tzu, The Art of War (Griffin, trans., Oxford University Press 1963, p. 98).
Unfortunately, Business Leaders are likely to find themselves being worn down trying to protect their on-line Trademarks under The Internet Corporation for Assigned Names and Numbers (ICANN) (the organization responsible for overseeing Internet domain names) recent decision to expand the number of Top Level Domains (TLDs). Under this overhaul there will be potentially an unlimited number of new domain names. This expansion is expected to go into effect in 2009.
There are currently only 21 generic TLDs, which include .com, .net, .biz, and .travel. ICANN, however, intends to expand TLDs to allow an applicant to use any string of letters as a TLD. For example, Google could register .google and use this to create http://www.advertsing.google and potential advertisers could email questions to firstname.lastname@example.org. Such brand name TLDs provide an opportunity to strengthen a company’s brand identity.
There is also the potential for registering sector TLDs, e.g., .lawyers (www.shinn.lawyer has a nice ring) or .cars. Such industry sector TLDs would obviously be attractive to companies within a particular segment of the market.
And speaking of a particular market, there will even be a “.xxx” TLD to transform a segment of the Web into a digital “Red Light District” (but please continue to read the rest of this post before you surf the Web to do “market research.” Thanks).
The down side of increasing the number of TLDs, however, for the Business Leader are several:
First, registering a new TLD will not be simple and inexpensive like the current registration process of a domain name. There will be a significant amount of paperwork and technical requirements. For example, the applicant must demonstrate that it has provided for backup so that if a disaster hits (think hurricane or your IT guy or gal calls in sick) the domain name data for that TLD will continue to be available through the back up location.
Second, it will also be expensive. The exact amount has not been determined, but it is presently estimated to run an applicant in the beginning range of a $100,000.00. The registration fee will also be non-refundable.
Third, and returning to the opening military tactic from Sun Tzu, the expansion of the TLDs will open up new ground that Business Leaders will likely have to battle cybersquatters over. Generally, companies dealt with cybersquatters by registering domain names that contain their mark or variations of their mark. For example, eBay reportedly owns 20,000.00 domain names with variations of eBay under the existing 21 generic TLDs.
It will simply be unrealistic — whether you own 20 or 20,0000 domain names — to assume that you will be able to protect your mark by registering all of its potential variations when there will be an unlimited number of TLDs.
Instead of wasting resources on the unrealistic, the Business Leader should follow another maxim from Sun Tzu: “Thus one who excels at warfare first establishes himself in a position where he cannot be defeated … For this reason, the victorious army first realizes the conditions for victory, and then seeks to engage in battle.” (Sawyer, trans., Westview Press 196311996, p. 57).
In other words, do what you can to develop the strength of your existing mark and domain name, continue to build your brand identity, and protect this investment under the current TLD organization. Once ICANN opens up the digital gates the Business Leader can then choose what, if any variations of its mark should be registered and what new TLDs make sense to develop, e.g., it would likely make little sense for Victoria’s Secret to register its main name in a TLD of .lawyer or .cars. But by planning and focusing resources on your current brand strength, future decisions are more likely to be based on a strategic position of market strength.
Feel free to contact the author if you have any further questions about registering domain names or other cyber law issues.