Defensive New gTLD Registration for the Small Business Owner — Protect Your Brand and Your Bottom Line

Unless you’re some kind of crazy nut, who loves spending money when you don’t need to, the prospect of new gTLDs might be worrying you. After all, it’s not possible for the average business owner to register a brand extension, and now that almost two thousand applications are finishing evaluation, there’s more concern about how to protect your brand than ever. Because nTLD awareness is ever-increasing, there’s added media attention, a lot of misinformation about how you as a trademark owner can protect your brand, and a lot of panic concerning the amount of money it will cost you.

One of the most talked about topics in trademark protection is defensive registration, or registering your brand, and the close misspellings of your brand, with nTLD registries to ensure that your Internet space is not obtained by another individual or company, and to protect the uniqueness of your mark.

While defensive registration is probably already a part of your protection strategy (if you’ve registered your trademark with more than one extension, like .com and .net), unilateral defensive registration in the case of nTLDs will be too costly for the majority of business owners, particularly small business owners. Registering your trademark and its common misspellings with well over 1,000 registries is a daunting proposal. Luckily, we don’t think it’s necessary or even possible to defensively register your brand for every extension. Here are some simple steps to take, before and after new extensions launch, to effectively protect your trademark while saving your bottom line.

1. Read the ICANN guidebook. It’s not exactly a page-turner, but the ICANN guidebook is a must-read for any business owner concerned with protecting brands and trademarks in the next few years. The guidebook thoroughly explains many of the protections already in place for business owners, including sunrise periods, the Trademark Clearinghouse, and the Uniform Rapid Suspension System. We talk about these options a lot more, here, but the bottom line is that before you consider defensive registration, you should become familiar with the more affordable protections in place. One of ICANN’s main goals is to block cyber-squatting and reduce brand infringements, so use the measures they put in place to your advantage.
2.  Scope out the nTLD territory. Using an online list of applications, like the one on the ICANN website, or the list on our site (which is organized by specialty), become familiar with the proposed gTLDs. Know that many of the applications are for brand gTLDs, community gTLDs, or geographic gTLDs, and these registries will operate as closed registries, available only to those who are in the community of the registrar. Many other applications for generic term extensions are also proposed closed registries, meaning that you wouldn’t be able to register for a domain in that registry, even if you wanted to. Also note that any closely related gTLDs, like .house and .houses, or .law and .lawyer, will probably not coexist, but rather one entity will be given the rights to run the registry for one of the proposed extensions. By knocking out the nTLDs that don’t relate to you, 1,917 applications becomes a much more manageable number and you can focus on your market.
3. Figure out which nTLDs are in your marketable area. Once you’ve started to weed out the extensions you have no control over, start taking a look at which extensions interest you, as well as which extensions relate directly to your market. Assuming your brand is not a wide-ranging unique brand name, like Kleenex, then you’ll only have to worry about registration in the domains that matter directly to you – the extensions you’d probably look into registering, anyway. If you own a shoe business, for example, .shoe, .shop, and .shopping might be of interest to you. Using a watcher, like the one we offer, will allow you to follow the application process of that extension, and know when sunrise opens, so you can register your trademark before anyone else or watch registrations to make sure your brand is safe.
4. Use the Trademark Clearinghouse. We’ve said it before, but registering your trademark in the Trademark Clearinghouse is cost-effective, and makes good use of the defensive strategies ICANN is building to protect you. For $150 a registration, you can register your trademark in the TMCH, and all registries will have to check their new registrations against the TMCH database, to ensure your rights aren’t infringed upon. Both you and the potential domain registrant will receive a notification when another person or company tries to register a string too similar to your trademark.
5. Watch free domain registrations very closely. Many market experts agree that while there is need to be concerned about trademark protection, the .xxx delegation process has shown that because new gTLDs are priced a bit higher, cyber-squatting is often less profitable. For example, with the launch of .xxx, there have been a relatively small amount of disputes. However, if extension go up for grabs, like Google has mentioned doing with a few of their extensions (offering .free for free), then cyber-squatting has a better chance of occurring, since the profit margin is higher. Tracking free nTLDs, and registering your trademark first, may be an important and easy first step in protecting yourself at a later date.

So don’t break out your pocketbook just yet – the most important first step in protecting your brand is to educate yourself on the process, watch the nTLDs that matter most to your market space, use the defensive mechanisms put in place for you, and only register what you need to. Defensively registering in all domain spaces is not only costly, but unnecessary.

To view a list of the proposed extensions, organized by specialty, check out our nTLD list here. To watch specific nTLDs, and be notified of any changes in the application process, sign up for our watcher. It’s a free service that allows you to enter only the nTLDs you’d like to watch and keep updated on them.