The ICANN Brussels meeting, at which Valideus was a silver sponsor,  featured a session called, “Brand management in the age of new gTLDs” moderated by Valideus MD Nick Wood, with issues and observations made by a formidable panel of speakers including: Caroline Perriard – Brand Intellectual Property Counsel, Nestle Debra Hughes – Senior Counsel, American Red Cross  Susan Payne – Brand Protection Manager, BBC Kristina Rosette – Special Counsel, Covington & Burling David Taylor – Partner, Hogan Lovells International LLP  Richard Waterhouse – Chief Executive, Royal Institute of British Architects

You can listen to an audio podcast of the event (fast forward approx. one minute), read the full transcript and the presentation slides that panel were invited to respond to. We have selected key highlights and thematically grouped them below:

Brand | Marketing and Sales | Trademarks and RPMs | Applying | Registry Operations | Public Interest

Brand

• A single new gTLD may not be enough if you own multiple brands and market in local scripts – and the process is too expensive.
• What happens if you migrate to dot brand and then your company is acquired and there is a re-branding?
• When should a corporation move from .com to brand? How do you assess the right moment?
• It is not clear when or if a company with a dot brand registry will abandon or cut back its current portfolio of domains.
• Not all marketers are going to welcome giving up the goodwill they have built under .com or ccTLDs.
• If you are about brand value, a dot brand registry could become a mark of value and quality but it is going to take a long time to get there.

Marketing and Sales

• Applying for a new gTLD is not about tackling cybersquatting: it is about making a marketing impact.
• What impact will the new gTLD programme have on search engine listings? The application costs are tiny compared to search engine marketing costs.
• To make a dot brand registry work you’ll need a massive marketing budget. It could take years before it pays off.
• You can use a new gTLD for validating your networks of distributors and licensees.

Trademarks and Rights Protection Mechanisms (RPMs)

• It is not just about building your own dot brand registry. What do you do about protecting your trademarks under hundreds of 3rd party registries?
• You have decided whether you want to be an applicant in the first round or an objector. You might not need to object if no-one applies for a variation of your brand or a generic term of importance to you but you had better be ready.
• You may be better off in court than going through the objection route that ICANN is proposing.
• ICANN reserves the right to re-delegate your gTLD in certain circumstances. That’s just not acceptable, having your trade mark given to someone else.
• The proposed rights protection mechanisms are better than they were at the start of the process but they are not enough, especially the PDDRP which is designed to counter “Bad Actor” registries. If it is not potent enough, there may be legal action but against who?  Should ICANN be sued?
• Under the legal precepts as they exist in most jurisdictions today, everything on the right side of the dot is considered to be a generic.  What effect does putting your billion dollar brand on the right side of the dot do to your enforceability rights?
• Does the “R” in URS stand for rapid or redundant? It is slower than the UDRP as now proposed.
• There remains a need for a rights protection mechanism that will prevent trade mark owners from registering at the second level under hundreds of new gTLDs, like the Globally Protected Marks list which the IRT recommended but which has been cut by the ICANN staff.

Applying

• A single location for genuine content is good in theory but how do you get the attention and engagement of all the people you need to sign off on a project that could mean a complete, massively expensive re-branding? This is not a decision to make by yourself.
• It is massively expensive: there’s the application fees, the annual fees, the costs of co-ordinating an application through consultants because you really can’t do this yourself, possibly auction fees and a legal action and then the charges of back-end registry managers.
• In a May 2010 survey of c. 100 MarkMonitor clients, 23% said they would apply, 22% said they would not apply and 55% are undecided. Of those considering applying, 70% said it was a defensive move and 76% that the new gTLDs will require them to spend more time and money policing the internet.
• There will be complex multi-national jurisdictional issues for some applicants that will need to be addressed including tax, transfer pricing, insurance etc. You’ll need to get your regulatory affairs and your IT people involved.
• Last minute applications won’t work. This is not a trade mark application and certainly a domain application. It is more like a securities filing.
• Information vital to the evaluation of an application may only come out through the public comments process. Anyone submitting such comments had better make sure they are 100% accurate.
• To what extent will the background checks on applicants impact on an application? Could the findings of an Italian court against Google over a privacy matter see Google ruled out?

Registry operations

• Why should private brand registry operators have to pay a registrar to put a domain in their own registry…or give “equal access” to multiple registrars?
• A new gTLD may provide a safe and secure environment where you can control the registration of domain names and perhaps decrease fraud.
• How do you choose your back-end registry operator? If you get hacked it is going to be big news all over the world but you may want someone better, more flexible than the current big operators.
• Big international companies will want to take charge, use a new gTLD in their own networks, limit public access.

Public Interest

• There has not been any research into what consumers think about the new gTLDs.
• The registration and operation of terms like dot Bank need government oversight. There is a Public Interest angle.
• If you want to apply for a generic term, to what extent are there anti-trust issues?