The URL factor in strategic brand management

By Khoo Boo Leong | Jul 6, 2009

A slew of generic top-level domain names (gTLDs) will be launched by the Internet Corporation for Assigned Names and Numbers (ICANN) next year. With more domain choices come strategic opportunities and risks. But first, businesses must assess the gTLDs’ impact on their trademarks, positioning and branding.

Since year 2000, ICANN has launched .info and .biz, and recently, .mobi as well as longer strings like .travel and .jobs. Following the launch of .asia, ICANN started a new gTLD programme last year.

Established and most sought-after TLDs are .com, .net or .org. In addition, there are country code Top Level Domains (ccTLDs) which have been offered in the market for the last 10 or 20 years.

“So far, there have been proposals for names of major cities such as .tokyo, .seoul, .berlin, .paris and .london,” said Ching Chiao, vice-president of DotAsia Organisation Ltd, a not-for-profit organization which oversees the .asia gTLD.

“There could also be domains for brands such as .sony or .samsung. These are dependent on the business model that these brands would like to adopt to run or manage the registry.”

Currently, “we see interest from regional and global brands like Seiko, Honda and Hitachi which use the .asia domain for their Asia-Pacific or regional portal,” Chiao added.

Strategic domains

Amid these developments, corporations need to assess their investment and business strategy with a TLD and how they manage their domain name portfolio.

“It’s time for these organizations to think strategically and holistically about their legal position, branding and administration so as to be more organized in managing their domain names,” said Chiao.

Here, many fortune 500 companies have set up a single multidisciplinary domain team that makes domain name registration decisions for the entire enterprise. In contrast, Asian businesses tend to distribute that responsibility to multiple departments with each administering its own domain name.

Alternatively, IP Mirror, the Singapore-based accredited registrar for .asia, .sg and many other ccTLDs like .cn, .in and .kr, help companies administer domain names via its Domain Management System. It recalls all the domain names a business has registered with other registrars and performs a complete clean-up to bring the portfolio up-to-date.

Specific services include issuing domain name renewal alerts at least six weeks in advance, renewing the names based on the company’s instructions and helping businesses to overcome local rules and regulations in each country extension by presenting proof of existing trademark rights or local presence.

Easily found

At the same time, “many SMBs do not realize that having more domain names help them to be more searchable online,” said Janna Lam, the managing director of IP Mirror. “It’s part of a search engine optimization strategy to boost your ranking in a web search.”

“More and more, companies are registering product and service names or even buzzwords,” said Chiao who cited Johnnie Walker’s www.keepwalking.asia [6] as an example. “Registering additional domain names cost less than paying the search engine providers to improve your rankings.”

Registering multiple domain names can also attract more traffic to a company’s products and services. “We’ve seen this happening in the .com domain where many businesses register multiple domain names to draw traffic to their websites,” Chiao added.

More alternatives

Soon, new gTLDs like .asia will open up opportunities to establish a regional web presence or reserve domain names that are not available in more established TLDs. “With .com, it is likely that the domain name you want is not available. So, the next best alternative is .asia where a lot more choices are available,” Lam added.

In Singapore, IP Mirror encourages businesses to register their domain names on both .com.sg and .sg because people trying to reach them may type the URL using either domain. The .sg domain is subdivided to com.sg, net.sg, org.sg, gov.sg and edu.sg.

“Companies forming new businesses used to go to the trademark bureau or business registrar to check the availability of trademarks and business name respectively but now it is equally important to check the availability of the domain name and register it at the same time,” Lam said.

Two-in-one offer

As an added incentive, DotAsia and SGNIC, the authority that administers the name space for the .sg domain, are jointly offering via IP Mirror a one .asia plus one .sg registration package for S$28 until 15th July 2009.

“Through the program, companies in Singapore can utilize a .asia domain to expand their business and identity around Asia, and at the same time solidify their presence locally with .sg," said Edmon Chung, CEO of DotAsia.

Cybersquatting challenge

Worldwide, concerns about trademark protection linger. Last year, the World Intellectual Property Office (WIPO) Arbitration and Mediation Center saw allegations of cybersquatting by trademark holders rise by a record 2,329 complaints filed under its Uniform Domain Name Dispute Resolution Policy (UDRP) dispute resolution procedure.

This represented an 8% increase over 2007 in the number of gTLD and ccTLD disputes handled. The total number of WIPO cases filed under the UDRP since it was launched ten years ago to over 14,000.

So, it is safer to register the domain name first before you announce or promote a new brand or product. Lam recalled how, within days of ST-NXP Wireless and Ericsson Mobile Platforms forming ST-Ericsson, the name of the joint venture was cyber-squatted. “In Asia, the most aggressive cyber-squatters are in Korea and China,” she said.

That’s the reason Chiao hopes more Asian companies will participate in ICANN’s dialogue on trademark protection. “Now, it’s very much a US- and Europe-centric discussion. The papers and discussions are publicly accessible on the ICANN website.” ICANN and registries like DotAsia and SGNIC have put in place policies and are further refining them to protect trademark holders’ rights.

Sunrise and landrush

Trademark holders have had the privilege, for instance, to reserve their domain names for .info and .asia during what is termed as the sunrise phase before the landrush phase when the domain names are open for public registration.

On its part, Dot Asia’s sunrise process is separated into 3 main phases: Sunrise 1 provides priority for governments in the community to reserve and register domains; Sunrise 2 allows registered mark owners to obtain domains corresponding to the marks they own; and Sunrise 3 allows registered companies, organisations and other entities in the DotAsia community to obtain domains corresponding to their entity names.

Sunrise 1 is even preceded by a pre-Sunrise period when governments from the region are invited to submit to the .asia registry a list of reserved names.

Although a registrar’s business policy allows trademark holders to get through the gate first but if they choose to register for .com only, their entity or trademark names for other gTLDs will be open to the public.

“I really encourage the trademark lawyers and law firms to work with domain name registrars to be aware of the TLDs being launched and the registrar’s sunrise policies,” said Chiao.

IP Mirror allows a reservation period of 3 months and if the mark owner or business entity fails to activate the reserved domain name, that domain name will be available for registration or reservation by any party. During the land rush period, IP Mirror accepts reservations on a first-come-first-served basis.

Brand protection

“Local companies are beginning to be aware of brand protection,” said Lam. “IP Mirror has been providing consultancy and education to businesses. In August, we will also be speaking at an Intellectual Property Office of Singapore talk where we will alert trademark owners to the importance of protecting their domain names.

“There’s no domain name without trademark and no trademark without domain name. It has become very important for brand owners to recognize that this is very strategic for them.”

Lam cited an example of a local company with a long established and well-known brand and trademarks all over the world. The company discovered multiple instances of their domain name being ‘cyber-squatted’ overseas.

Despite having both Chinese and English versions of their brand, the company had only thought of protecting its trademark but not its domain names. The problem became more serious when one of the websites sold fake versions of its products.

In cases of cybersquatting, IP Mirror will, on its customer’s behalf, compel alleged infringers to relinquish the domain names. For example, it uses ICANN's UDRP which is an accelerated and cost-effective legal procedure to recover domain names from "bad-faith" registrants.

“Once we get a complaint about fraud or cybersquatting, we inform the registrar to contact the registrant,” said DotAsia’s Chiao. “If there is any abuse or misuse, the registrar has a right to suspend the DNS resolution.”

DNSSEC for .org

Meanwhile, the Public Interest Registry which manages the .org TLD, is implementing Domain Name System Security Extensions (DNSSEC) within the .org domain. DNSSEC is a set of DNS extensions which provide 3 basic functions.

It assures that data is received from an authorized DNS server to prevent impersonation attacks. It also matches data received with data on the origin DNS server to ensure the data is not modified during transit. This prevents man-in-the-middle type pollution attacks. Lastly, it authenticates Denial of Existence, assuring that a "Non-existent" response is valid.