An overview of ICANN’s gTLD Programme: what do sports brands need to consider to protect their brand?

How do you calculate the market potential for a sports domain such as .CRICKET, .FOOTBALL, .RUGBY, .BASKETBALL, etc? According to one of the operators of these newly launched generic top level domains (gTLDs) calculating the market potential for sports gTLDs is never easy and can be very subjective. ¹

One of the main reasons for this is that ‘passion’ is an integral part of the equation and, in sports, passion can far outweigh normal common or business sense. Nevertheless .CRICKET , for example, is being marketed as “the new top level domain for 2 billion fans”². Of course targeting fans is one thing but how do established brands and organisations operating within the cricketing world apply common or business sense to make a decision as to whether to participate in this new gTLD and also secondly as to how to protect their interests against outside threats in what could become the go-to place online for all things cricket related?

The gTLDs are not restricted to the cricket pitch, or for that matter to sport, but increasingly the issues highlighted above will be replicated across a huge number of new top level domains as they are unleashed on the internet and brand owners will need to adopt a strategy that prepares them for the long innings ahead to stay ahead of the game.

In this article Sean Corbett, Brand Protection Manager at Formula One Management Limited, provides a brief overview of the gTLD Programme and how it might affect those involved in sport or indeed any business with an online presence and a brand to protect.

Sports Rights Owners Digital Footprint

There was a time when one might have marvelled at the ability to be able to locate the latest sports scores and results online but the internet has undoubtedly become a far more valuable resource for sports fans than a results service. It has been said that “almost overnight the internet has gone from a technical wonder to a business must”³. Sports Rights Owners (SROs), broadcasters, sports federations, brands and individual athletes are all accustomed to owning and operating a website and the plethora of social media accounts that support their online presence. Content is viewed, tickets & merchandise sold, events and brands are promoted online to an unprecedented audience. As the world of sport has embraced the professional era and the subsequent commercial explosion that has accompanied the buoyancy of sport as a product (and marketing tool) the internet has helped grow the commercial value of intellectual property rights (IPRs) in sport and its individual participants.

It is almost unheard of for any serious business enterprise not to have an official website; an online presence is a business must to promote any commercial message in the digital age. Sport is no different. The core domain names that define an organisation or a brands internet presence are essentially its home on the internet and in many ways the online mouthpiece for that brand. The internet is changing, or at least we are led to believe this is the case and perhaps the biggest change to happen to the internet since the first set of top-level domains (.com, .org, .net, .edu, .gov) were launched in 1984⁴ has been the introduction of the new generic Top Level Domains (gTLDs). Fanfare aside, the roll-out of the new gTLDs is in full flow and if you didn’t already know what this entailed now would be a good time to learn a bit more about the programme, launch dates and protection mechanisms envisaged to assist rights holders in this changing environment.

The Introduction of gTLDs

The Internet is administered by a non-profit corporation called the Internet Corporation for Assigned Names and Numbers (ICANN). It is this entity that has responsibility for the character strings that go after the dot - otherwise known as top level domains (TLDs).

After many years debating the issue ICANN opened the new generic top-level domains application period in January 2012 with the aim to “increase competition and choice in the domain name space”⁵. Between 1999 and November 2011, ICANN had only allowed 14 new gTLDs to launch. By the time the new gTLD application period closed ICANN had received 1,930 applications submitted at a cost of $185,000 each, netting ICANN the not insubstantial sum of $357 million. When “Reveal Day” came Rod Beckstrom, then President and CEO of ICANN commented that:

"We are standing at the cusp of a new era of online innovation. That means new businesses, new marketing tools, new jobs, and new ways to link communities and share information."⁶

Unfortunately this new era also presents new opportunities for cybersquatting, phishing, counterfeiters, fraudsters and unauthorised streaming of content protected by copyright.

Of the 1930 new gTLDs, only 1409 were unique TLDs. That meant over 500 gTLD strings were overlapping or competing terms which attracted more than one applicant. These contentious names were placed in contention sets for the applicants to resolve themselves failing which they would go to auction. The interest in (dot)APP was well publicised and with 13 different companies including both Amazon and Google applying this term was the most sought after generic string applied for.

Choosing to be a part of the new gTLD process at the Registry level ie. running a Dot ‘Brand’ (eg. .LEGO) or a Dot ‘Generic’ (.HORSE) would be a significant move in itself and this article does not propose to consider the implications of this commitment. If this wasn’t a consideration for a brand or organisation ahead of the application stage then that boat has set sail. However with round 1 barely planting its feet in the internet space ICANN are already looking at round 2.

The Facts

A full list of the character strings (gTLDs applied for) can be found online at https://gtldresult.icann.org/application-result/applicationstatus from .CHRISTMAS to .MOVIE the list makes interesting reading.

The Latest stats on numbers can be found online at https://ntldstats.com/. At the time of writing this article the gTLD .XYZ was the most popular domain with over 745,960 second-level domain filings in this TLD. The strings .BERLIN and .CLUB are next in terms of numbers but are some way behind. Many of the gTLDs that attracted multiple applicants are likely to see the biggest levels of interest, but only time will tell what the true success stories are.

The Launch dates for the various gTLDs that have been approved so far can be found online at https://newgtlds.icann.org/en/program-status/sunrise-claims-periods. Bear in mind that the launch phases are staggered with a priority period (known as the Sunrise Period) available for prior rights owners.

Between them Google, Microsoft, Amazon, Apple and Yahoo applied for over 10% of the new Registries⁷. This in itself might give some credence to the statement widely associated with the American computer scientist Alan Curtis Kay who pontificated that “The best way to predict the future is to invent it”. No doubt being a part of the expansion of the internet space will place these online innovators in prime position to influence how we use the internet and how it works for us. It is hard to predict how search engines might change but with some of the internet’s most active companies driving the internet expansion it seems likely that rankings in search results will almost definitely experience a makeover. It may take some time but it would be wrong to assume that .com will always be the “go-to-place” to find an official site on the internet or the most popular although this author believes that many of the new gTLDs will fail over time.

In the meantime what internet users and brand owners could be faced with is a more complex and hostile environment to navigate and a wider space online to police for infringements. It follows that a massive increase in the number and type of domains available also means an increase in the number of potentially infringing domains for rights holders to worry about. Policing a brand across 22 Top level domains is hard enough but across 1500 is almost enough to make a rights holder resign from the internet.

In order to help facilitate the expansion of the internet space and appease brand owners concerned about infringements ICANN have introduced some protection mechanisms that might offer some solace to rights holders.

The Trademark Clearing House

The Trademark Clearing House (TMCH) acts as a central repository of authenticated trade marks⁸. The TMCH will help validate registrations relied upon in dispute resolution procedures however its rasion detre is to enable trademark holders to participate in Sunrise Registration phases thus allowing them to secure important domains (that match the mark they have placed in the TMCH) before a gTLD is made available to the general public.

Trademark Notification Claims

Another benefit of registering trademarks with the TMCH is that if a third party seeks to register a domain within a new gTLD which is identical to an authenticated trademark in the Clearinghouse the Trademark Claims Service will provide notification (during the first 90 days of general registration) to the prospective registrant – essentially putting the applicant on notice of a brand owners prior rights. A notable downside being that the new Registrant can simply ignore the notification as they see fit.

Uniform Rapid Suspension (URS system)

In addition to the more commonly known UDRP system which enables aggrieved parties to challenge the registration of domain names and recover disputed domain registrations all new gTLDs will be subject to the URS system which was created to “provide rapid relief to trademark holders for the most clear-cut cases of infringement offering a cheaper, faster response than the UDRP”⁹. The URS will enable rights holders to have a domain name suspended for the remainder of the registration term (or for a fee an additional year). Unlike a successful UDRP action the domain does not get transferred to the Complainant. After the suspension end domains become available for registration again.

Blocking Mechanisms

Some Registrars operating multiple gTLDs such as Donuts Inc, (applicant for 307 new Top Level Domains) have created blocking mechanisms offering rights holders the chance to put a block on all domains being run by that Registrar. This generally involves a trade mark owner paying a fee to place validated trademark already in the TMCH on a “protected mark lists”. Other Registrars have followed suite. Again the rights relied upon must already be validated in the TMCH and there are exceptions and cost implications that rights holders will need to be aware of but a large scale defensive block might be preferable to registering in 300 or so new Top Level Domains separately.

Domain Name Portfolios

Whether advising individual athletes, sports federations, clubs, broadcasters or sponsors the inherent value in sports rights and endorsement arrangements make the threat from cybersquatting a potential minefield when it comes to registering, maintaining and enforcing IP rights online. The rise in clicks and order business as opposed to bricks and mortar business has been seen as a primary driver for the expansion of the domain name space but the question that remains for established brands is what approach should a rights-holder take to protect their IPRs and/or reputation when they are already perfectly happy with their domain name portfolio? Can they sit back and ignore this expansion and hope for the best?

There are naturally a number of questions that permeate the online strategy adopted by brands against the backdrop of this new expansive domain name era. Perhaps there has never been a better time for rights holders to cast a critical eye over their current portfolio and focus attention on the domains and brands that really matter.

The introduction of a large number of varied gTLDs presents a number of challenges to rights holders. Should a rights holder care if someone registers their brand name as BRAND.WTF or a leading athletes name in the .NINJA top level domain space? If an individual registers a football club’s name as CLUB.CLOTHING will it become the go to place to buy replica kits online if the club do not take action to stop their name being used? Equally, if a sports rights-holder hosts events in locations that have now got their own geo gTLD such as .LONDON, .BERLIN, and .PARIS (subject to qualifying criteria) can the aforementioned organiser afford to miss out on not registering the corresponding event name in the geographical gTLD?

A Sporting Domain

The application of new gTLDs to the wider world of sport is not simply restricted to very obvious strings that have a sporting connection such as .BASKETBALL, .CRICKET, .GOLF, .HOCKEY, .RUGBY, .SKI, .SPORT and .TENNIS or associated products such as .TICKETS. New gTLDs such as .BET, .EXPERT, .GURU, .PHOTOS, .REVIEW, .SPACE or .WHOSWHO could all have an application to the world of sport which might not be imminently noticeable but scratch deeper and SROs might rue a missed opportunity for overlooking or dismissing a generic term without considering the implications.

Strategy – Defensive filings

The principle behind defensive registrations is simple: it is cheaper to pro-actively register your BRAND.TICKETS for example than it would be to recover it from a cybersquatter who has hijacked the name with the intention of profiting from either selling it back to the owner or, perhaps worse, to a third party who could amplify any wrongdoing or threat to the rights holders brand by misusing the domain or damaging the brand reputation.

Defensive registrations were probably a realistic option when there were merely a handful of gTLDs in existence but operating in what will be close to 1500 possible new gTLDs makes even a cursory defensive programme a daunting task. Defensively registering all possible combinations of your brand, sub-brands or a client’s name in all possible gTLDs is simply no longer feasible, unless money really is no object. Throw into the mix escalated costs of registering trade marks in the TMCH, Sunrise Periods or protecting variants or misspellings of a name and the expansion of the internet starts to look less and less appealing.

A More Tailored Strategy

Even for brand owners with a substantial war-chest to spend on brand protection it would be difficult to manage and justify the expenditure on a blanket defensive programme. A more tailored strategy that goes beyond defensive registrations certainly makes more sense –although easier said than done. Below are just a few factors to consider when determining what approach is right for your brand, business or client:

1. Identify the domain names and brands that you or your client already use or may wish to use in the future and familiarise yourself with the new gTLDs that will become available or in many cases are already available. Be aware that Internationalised Domain Names (IDNs) allowing TLDs in different scripts have also had an influence on the list of gTLDs applied for.
2. 2.Register relevant trademarks that match terms that you or your client might apply for in the new gTLDs in the Trademark Clearing House since successful ‘Sunrise Registrations’ will succeed based on validated marks in the TMCH. Be creative. If a client’s name or brand is not registered as a trademark and therefore cannot be placed in the TMCH find a way to fast-track a trademark registration (Consider for example an expedited application in the Benelux) and get it into the TMCH.
3. Closely scrutinise the new gTLD list and categorise the different character strings applied for according to how they fit with the brand(s) you wish to protect. Highlight those gTLDs that might appeal to the business/brand or present new opportunities versus those which might pose a threat or be at risk from cybersquatting if picked up by a third party.Come to a decision as to whether a gTLD is ripe for participation, blocking, monitoring or ignoring.
4. Sunrise v General Availability – Consider how badly as a brand, you or your client need a particular second-level domain name. If you or your client cannot risk letting a domain fall into the hands of another party make sure you are in position to secure a Sunrise Registration in the priority period.
5. Revisit domain name policies. If you don’t already have one - consider adopting one, or at least a best practice guide that will help differentiate between gTLDs that warrant participation in and those that are low risk to your brand. Essentially the question that needs to be asked is this; What damage would a particular domain hosting an active website cause if left unchecked in the hands of a third party? Pay-per-click revenue sites might be significantly less damaging than copycat websites selling counterfeit goods or hosting illegal streaming.

Conclusions

Ultimately, a sensible online brand protection policy should go well beyond just defensive registrations. It should employ a balance between defensively registering domain names in key TLDs, together with enforcement against damaging cybersquatting and phishing activities. Strategies will vary from brand to brand and according to budget so flexibility is key. Regardless of whether you subscribe to the notion that the new gTLD programme is a unique opportunity to stand out at a time when the internet is rebooting its settings or that it is an unwanted digital gold rush responsible for consumer confusion and cyber-squatting it is certainly better to have a plan for your or your client’s brand than not. If the best way to predict the future is to create it then perhaps the best way to prevent a future that you don’t like is to devise a strategy that allows you to make the future and more specifically your digital assets work for you.

Sean Corbett will be speaking at the LawInSport Conference on the 26 February 2015. To find out more and to book your place click here.

• Brand Protection Intellectual Property Sports Rights