Balancing a robust defense with an exciting attack in the domain name world

Stuart Fuller

I’m a keen team-sports fan, and although the clubs I hold an affection for do not always win, I know it's not always about the result. OK – I admit I have an uncanny habit of backing teams that lose more than they win, but that enables me to gain a perspective on what actually makes a good team. The combination of a robust, ruthless and reliable defense combined with an exciting, energetic and entrepreneurial attack is something we all want to see − and in the vast majority of cases, the teams that win the titles, trophies and accolades will be the ones that show that the best form of attack is an active defense.

So, what has this got to do with domain names and the strategies employed by brand holders? Actually, quite a lot. Since the launch of the new gTLD program in 2011, brand holders have been unable take the ‘ostrich’ approach of sticking their head in the sand to avoid taking any action. There have been countless examples since the first new gTLDs launched in early 2013 of major brands seeing their intellectual property being infringed by both criminals and opportunists who are looking to exploit the brand value of their existing trademarks and digital assets.

Even if a brand has no interest in proactively registering and using the new gTLDs (the opportunity for some exciting, energetic and entrepreneurial attacking of the digital space), they need to ensure they understand the risks of taking a non-committal approach, or, in other words, the robust, ruthless and reliable defense.

The current phase of the new gTLD program is in a lull at the moment whilst the final contention sets are sorted. This should be the perfect opportunity for all brand holders to review what their strategy has so far achieved, as well as how some of their competitors are using the new gTLDs. The beauty of the program is that there are relevant and keyword-rich new suffixes that could really add value, both in terms of search ranking and digital branding. However, as domain names are unique (there can only be one, for instance), the opportunity to take advantage of the current available names may be limited – after all it’s a first come, first served program, which is why that robust defense coupled with the entrepreneurial attack is so important.

The beauty of the program is seen as the Achilles heel for many organizations – cost. Brand holders quite rightly raised their hands when the expansion of the Internet was first proposed, saying that the cost to set up the ‘defense’ was prohibitive and would stop them investing in the ‘attack’. The introduction of Rights Protection Mechanisms (RPMs) such as the Trademark Clearinghouse (TMCH) and Domains Protected Marks List (DPML) went some way to placate them, but even so, many looked at the number of applications and simply saw dollar signs in front of their eyes. But for smaller organizations that want to compete with much bigger companies, adopting a new gTLD as their primary domain is a virtual risk-free decision, or, back to our sporting analogy, a real entrepreneurial attacking move.

Slowly but surely, we are seeing smaller organizations starting to benefit by registering and using a new gTLD as their primary, keyword-rich domain. Business continuity consulting firm Jermyn Consulting adopted and is already the first natural search result for the brand name; specialist artist footwear brand Orphe Shoes is using; and the Melbourne-based grocery chain Fredericks has adopted

In some ways, firms such as these are the real winners of the new gTLD program so far. They’ve understood the risks of missing out on the opportunity and seen the potential – balancing the defense with the attack. Unfortunately, too few major brand holders and digital influencers have taken the same approach, which in turn has led to a “well if they aren’t doing it, neither are we” approach from other major brands.

The entrepreneurial approach to changes in the digital world is not something new. The secondary or resale market for ‘old’ domain names continues to be strong, and many of these names will have originally been purchased by individuals and organizations that took the entrepreneurial attack option many years ago and are now seeing the financial benefits.

Whilst many brand holders will consider the protection element of the program fist, the saying “attack is the best form of defense” is as true in the digital space as it is in the sporting world.