What are risks and op­por­tun­it­ies of new gTLDs?

The gradual in­tro­duc­tion of new generic TLDs was meant to lighten the burden on the domain market somewhat. Prac­tic­ally any term was allowed as long as it complied with ICANN’s guidelines. This freedom led to con­tro­ver­sial sug­ges­tions like .guru, .sucks, and .wtf as well as other numerous lengthy proposals.

Risks and op­por­tun­it­ies when re­gis­ter­ing a new gTLD

ICANN’s decision to loosen address al­loc­a­tion and create new top-level domains proved to be popular from the start. Just a few months after people caught wind of the decision, busi­nesses, cities, and com­munit­ies as well as non-profit or­gan­isa­tions rushed to register their desired domains. The sug­ges­tions included trademark domains like .apple or .bmw, regional ref­er­ences like .nyc and .boston, as well as general terms like .love, .blog, and .shop.

But in the midst of rejoicing about this new-found freedom, there was worry about whether competing companies or critics would already own the ending you wanted for your brand name, product line, or business segment. The or­gan­isa­tion, which is ad­vert­ised by ICANN as a domain name registry, is ul­ti­mately in charge of deciding the avail­ab­il­ity of a domain ending and the usage guidelines. The result was a lengthy dis­cus­sion whereby different stake­hold­ers claimed certain top-level domains for them­selves and con­sequently tried to stop others from using them. For this reason, the new endings include numerous exclusive top-level domains, which are not available to private users at all or only to a limited extent.

Brand nTLDs

These include nTLDs that are intended to be used ex­clus­ively by brand owners. Around a third of the ap­plic­a­tions processed by ICANN account for busi­nesses and or­gan­isa­tions that want to register their own name domain as ad­min­is­trat­ors. This includes companies like Apple, Google, and BMW. They don’t ne­ces­sar­ily register the domain because of its ad­vant­ages, they are sometimes concerned about cy­ber­squat­ting, which is a practice that involves someone else occupying a domain ending.

For private persons, there is hardly any risk of ac­ci­dent­ally re­gis­ter­ing a trade­marked new TLD since trademark nTLDs are not offered by tra­di­tion­al providers.

Domain endings with CPE status

The ‘community priority eval­u­ation’ (CPE) was in­tro­duced by ICANN to allow stake­hold­ers to protect popular endings from large cor­por­a­tions. If a community ap­plic­a­tion is submitted to ICANN, it is given priority over con­ven­tion­al ap­plic­a­tions. This can only happen when the applicant can prove that the majority of the affected community supports the ap­plic­a­tion for the domain. Site owners generally make domains with CPE status available when they are part of the community or a specific industry. This is how .hotel endings focus solely on hotels, hotel chains, hotel as­so­ci­ations, and hotel marketing or­gan­isa­tions. In order to prevent your own domain from being blocked, or to avoid legal disputes, users should check relevant community domains in advance to see if they fulfill the necessary re­quire­ments.

Regional nTLDs

Domains con­tain­ing regional ref­er­ences have become very suc­cess­ful over the last few years. New domain endings like .london and .wales offer the benefit of present­ing an offer in a regional context, allowing site owners to directly address the desired read­er­ship. In order to register an nTLD, website owners usually have to prove that they have a residence or a re­gistered business in the ap­pro­pri­ate region. This helps safeguard against the nTLD being misused. A popular tip to still be able to use these new TLDs is to register a domain through a local trustee that’s acting as a re­gis­trant for the actual holder.

Con­tro­versy when al­loc­at­ing new top-level domains

Customers pay a monthly fee for re­gis­ter­ing a domain. Supplying address suffixes is a prof­it­able business for ad­min­is­trat­ors of popular nTLDs. The basic problem with new TLDs with high re­gis­tra­tion volumes is that they put wealthy busi­nesses in par­tic­u­lar at an advantage as they are equipped to pay millions in licensing fees. There are many nonprofit or­gan­isa­tions that would like to reserve some of these new domains for them­selves. The lengths in­di­vidu­al busi­nesses go to to occupy general nTLDs as brand domains is an ad­di­tion­al factor that can po­ten­tially lead to conflicts.

ICANN’s guidelines generally exclude the exclusive use of general language terms. However, the ad­min­is­trat­ive body’s decisions have re­peatedly caused annoyance in the past.

Amazon not so lucky with its own brand nTLD

The online mail order business, Amazon, didn’t have much luck when it came to re­gis­ter­ing its own domain in 2012. When applying for the extension .amazon in 2012, the company had to appeal an objection from the Amazon Co­oper­a­tion Treaty Or­gan­iz­a­tion (ACTO), a group promoting the de­vel­op­ment of the Amazon basin. Led by Brazil and Peru, the group wanted to use the domain for websites about en­vir­on­ment­al pro­tec­tion measures and the rights of in­di­gen­ous people. The alliance also insisted ICANN make a new rule so that geo­graph­ic­al cat­egor­ies have special pro­tec­tion.

in 2019, a full seven years later, ICANN sided with the con­glom­er­ate and granted Amazon the rights to use .amazon as a trademark TLD - much to the dis­ap­point­ment of ACTO members, who, in­cid­ent­ally, had been offered Kindle readers and other products worth five million dollars by Amazon during the course of the dispute.

Pre-pro­grammed problems with nTLDs

Among the freely available nTLDs, there are some options that could prove to be fertile ground for legal disputes. These are domain endings that have the potential to defame busi­nesses, brands, or in­di­vidu­als. The ones high­lighted in media reports include .sucks, .porn, and .wtf. To prevent in­junc­tions from being issued, website owners should exercise caution when using such domain endings.

.sucks – an annoying domain

‘This sucks’ is generally used to express dis­con­tent about a person or a cir­cum­stance. Many brand owners believe that this new TLD will be used pre­dom­in­antly for de­fam­a­tion and have tried to pip others to the post through defensive re­gis­tra­tions. Similar behaviour has also been seen among celebrit­ies. In 2015, for example, singer Taylor Swift took the pre­cau­tion of reserving both the .sucks domain for her name as well as the cor­res­pond­ing .porn coun­ter­part.

Vox Populi, the domain registry re­spons­ible for the .sucks domains, does not see any problems with the new TLD. The registry sees the ending rather as an op­por­tun­ity for companies to enter into a dialogue with customers.

Why defensive re­gis­tra­tion is un­ne­ces­sary

Domain endings like .sucks, .wtf, and .porn are only prob­lem­at­ic when used in com­bin­a­tion with brands or proper names. Although a site like www.monday.sucks is totally harmless, a site like www.brand-name.sucks could damage the brand’s trademark rights if the site is not operated by the brand itself.

A company doesn’t ne­ces­sar­ily have to register the address them­selves in order to protect the brand’s rights. ICANN has two efficient methods available for this, which are the Trademark Clear­ing­house (TMCH) and Uniform Rapid Sus­pen­sion (URS), which protect against unlawful domain re­gis­tra­tions. The Trademark Clear­ing­house serves as a central register where brands can be recorded. If a new top-level or second-level domain is proposed that matches an existing data set in the register, the ap­pro­pri­ate brand owner will be notified. Brand owners can have internet addresses suspended via the uniform rapid sus­pen­sion if someone tries to register a similar domain or misuses the re­gis­tra­tion process.