.BRAND : 4 episodes, for this summer

.BRAND : 4 episodes, for this summer
Photo : CC BY-SA 3.0 Nick Youngson – source : http://nyphotographic.com/

Act 4: Reconstruction

While a myriad of new extensions were open for recording, the time was to select .COM, .CM, .OM, .CO or .CAM records? .FR or .FRL?

The decision to make registrations in all new extensions of course has a high cost and is no longer necessarily wise.

This is also why, some brands have chosen a .BRAND: its own TLD, its own sovereignty, its own management rules! Many brands have opted for this configuration and we can see now the blooming of .BNPPARIBAS, .ALSTOM, .SNCF, .LECLERC, .GOOGLE …

This reflection on .BRAND has sometimes been badly conducted: some brands have now abandoned their own TLDs, such as McDonald’s. ICANN has a list of these TLDs, along with the very formal letters from the companies asking to remove the area of ​​confidence, historically so costly. It reminds me of The Fallen Astronaut. We can say that the abandonment of these TLDs will be used for others to build themselves up. A good general uses the strength of the enemy as Sun Tzu said!

These discontinuations show that the companies concerned have not seen today the benefits they could make from the costs associated with the creation and management of a .BRAND. Others, more daring, have discovered the interest and / or imagine discovering new service opportunities allowing them to have an increased or even total control over their infrastructure to come with high stakes, Internet of Things, Industry 4.0 …

Let’s wait for the first connected objects and the deployment of a real infrastructure around a resilient .BRAND and we’ll see!

Read act 1: Denial (and Anger)

Read act 2: Expression

Read act 3: Depression


.BRAND: The importance of the digital strategy, or the McDonald’s case

McDonald’s! The symbol of globalization: from the invention of the express service by the eponymous brothers to its successful franchise by Ray Kroc (I recommend the film ‘The Funder’), McDonald’s is an example of post-war entrepreneurial success. The BigMac, the Filet o’Fish? These are the inventions of franchisees that headquarters have agreed to develop throughout the world. A model of innovation.

What about their digital strategy? When Internet arrives and everyone talks about it, a Wired reporter contacted McDonald’s to explain that Burger King could record mcdonalds.com. McDonald’s will not register it. Then the reporter does, the US firm tries to recover it and will donate 3500USD to a school in order to buy computer equipment.

Once bitten, twice shy. As a result, McDonald’s is creating a preventive policy of registration of domain names: goldenarches.com, mcd.com, bigmac.com, …

If RayKroc.com and mcdo.com are already cybersquatted, the implementation of a defensive registration policy has begun.

Thus, when the new gTLD program is launched in 2012, McDonald’s is a candidate and wins the .MCD and the .MCDONALDS (MCD is used internally for e-mail).


McDonald's Illustration: Home page of NIC.MCD
Illustration 1: Home page of NIC.MCD

We note the weak development on the home page of the .MCD, which is limited to ICANN’s obligations regarding the presentation of the TLD.


McDonald's Illustration : WHOIS of .MCDONALDS
Illustration 2: WHOIS of .MCDONALDS


The Whois service of the .MCDONALDS allows the identification of the owner, although, as presented in the file for ICANN, the .MCDONALDS is not intended to be an open extension.

What is interesting in the Whois is the joint management of different departments:

  • First contact: IP Division, Eric William Gallender, Senior Intellectual Property Counsel
  • Second Contact: Marketing Division, Anja Morrison Carroll, ‘Senior Director, Marketing’

In the motivations of the company to benefit from a .MCD and a .MCDONALDS coming from a public document, we can find the will to recreate confidence. McDonald’s highlights its gTLD, ccTLD and preventive registrations (.XXX, among others).

McDonald’s has many commitments:

  • provide an easy and intuitive reference and access point for internet users;
  • represent authenticity thus promoting user confidence;
  • direct internet users to locally relevant information and products;
  • use appropriate geographic names to connect with internet users in the relevant regions ;
  • potentially use IDNs to enable customers to interact in their native language;
  • enhance security and minimise security risks by implementing necessary technical and policy measures;
  • strengthen brand reputation and user confidence by eliminating user confusion; and
  • prevent potential abuses in the registration process reducing overall costs to businesses and users.

However, on May 2nd, 2017, a signed letter from VP Global Brand Marketing, Colin Mitchell announces the end for both TLDs.

There is no reason mentioned to justify this request and McDonald’s IP has not responded to the requests for communication.

McDonald's illustration: The letter of McDonald’s
Illustration 3: The letter of McDonald’s

McDonalds has failed to do with these two TLDs more than a trusted place for the websites: a .BRAND, yes, but it’s necessary to have a real strategy of deployment and use.

Creating a .BRAND with the only purpose of defending the intellectual property doesn’t seem, in that light, to be a successful tactic. The success of a .BRAND is mainly conditioned by an effective strategy, and its development has to anticipate far ahead, its use, as well as its implications regarding the digital and commercial communication.



.BRAND : 4 episodes, for this summer

.BRAND : 4 episodes, for this summer
Photo : CC BY-SA 3.0 Nick Youngson – source : http://nyphotographic.com/

Act 3: Depression


Five years ago, the number of domain name extensions was alright: less than 500. It was still possible to register its trademark and its company’s name in the extension of its choice and to act against fraudulent deposits. Attacks were unusual and you defended yourselves when smart little ones made contentious deposits. Some extensions only accepted subdomains registrations, such as Australia and the United Kingdom. Impossible to save at the root and impossible to register without having any rights: .CO.UK for companies, .AC.UK for the academic world,…

But that was before.


Domain names - Number of delegated TLDs


Then arrived several generic extensions and if the rare extensions created, caused only few problems (.MUSEUM, .MOBI, .AERO,…), this was not the case for the thousand new delegated extensions following the new gTLD program, opened on January 12, 2012. Although brands have filed .BRAND or .COMPANY to protect their territories, many extensions were open and the registration race allowed smart little ones to create big damage. The registration of BLOOMBERG.MARKET and VINCI.GROUP are two particularly well-known examples.

Today, the management of domain names is managed by people dedicated to this activity, mostly within marketing, legal and IT departments.

But what do you have to do? Register your brand in all TLDs? Spend an important amount in domain name retrieval procedures? An in-between?

Interesting alternatives are born from the opening of the new gTLDs:

  • Create a closed extension with subdomains to find the identification-trust link, such as the .FX project I presented a few days ago to NetWare2017 ;
  • Create your own extension: some already do this well, like .BNPPARIBAS or .LECLERC ;
  • Help the end user and this is the project of the Nameshield’s CEO, through Brandsays, a browser extension.

If the brands continue to rightfully submit domain names, they will also develop other means of access, such as SEO or social networks.

While INTA, in its recent study, highlighted impressive figures regarding defensive actions, to get the right answer, you have to ask the right question. We will see in the fourth and last episode of this summer saga, how to understand the .BRAND strategy.


Read act 1: Denial (and Anger)

Read act 2: Expression

Read act 4: Reconstruction

.BRAND : 4 episodes, for this summer

.BRAND : 4 episodes, for this summer
Photo : CC BY-SA 3.0 Nick Youngson – source : http://nyphotographic.com/

Act 2: Expression


We left off on the time when the brands did not feel the Internet revolution, the techniques evolving and the registered domain names. (Read act 1: Denial (and anger))

The example of McDonald’s is interesting. In 1994, Wired, an American magazine created a year earlier, communicates about the case of mcdonalds.com. Joshua Quittner, a journalist at Newsday, contacted McDonald’s and asked if they would be interested in registering mcdonalds.com. There was little to no answer. He registers the name, contacts McDonald’s which does not answer. Then he publishes his article on Wired, putting the contact address ronald@mcdonalds.com.

McDonald’s complains and Quittner asks for a donation for charities: it will be 3500USD for the computer equipment of a school in New York.

McDonalds - .brand domain name example


In analogy, we can remember when a Russian worker asked for a gift from Vladimir Putin, who could not refuse in front to the camera. Putin offered him his watch worth a year’s salary.

The virulent attacks of trademarks are legion in order to recover the domain names from little jokers, some of them could be part of the company, such was the case for mtv.com.

Brands federate among themselves, contact ICANN to develop simplified procedures, even if, according to the famous trademark dilemna, the American organization had known the risk of cybersquatting for a long time.

On the side of lawyers, training courses are launched on each side of the Atlantic and the UDRP, SYRELI, URS and others, are created in order to defend the digital territories.

France, known for a long time as a country supporter of trademarks, will not remain passive and is today, the second country in the world in the disputes resolutions concerning domain names.

Thus, in the virtual territory, and in contrast to the reality, the police is financed by trademarks. The holders of a territory, similar to countries, are doing nothing or almost nothing: recovering a .Fr can be possible using a SYRELI procedure, while for our friends from the outside of Rhine, no alternative procedure exists: to apply for its .DE, it is the court or nothing.

Nevertheless, an economy of defense of brands is organized and thus, an ecosystem is developed.

Everything seems to be going well, until the arrival of the new extensions, as called in the field, the first round…


Read act 3: Depression

.BRAND : 4 episodes, for this summer

.BRAND : 4 episodes, for this summer
Photo : CC BY-SA 3.0 Nick Youngson – source : http://nyphotographic.com/

Act 1: Denial (and Anger)


The brand, a forbidden territory. Everything is played out by attacks, complaints, courts. A ruthless world. Since the 23rd of June 1857 and the creation of the first system of trademarks by France, it is possible to benefit from an exclusive right of use for a term on different applications. Otherwise the law is coming. The arrival of the Internet will shake up this foundation.

If one remembers the Milka conflict with Kraft foods, which led to the famous opposition between Milka Budimir, a seamstress in Bourg-lès-Valence, and the American giant Kraft Foods about the domain name milka.fr, we can keep in mind the case of many domain names holders who succeeded in winning attacks against those bigger than them.

The expression of David vs Goliath is illustrated in France with leclerc.fr, domain name registered by a fan of the Leclerc tank. In spite of an attempt at recovery of SYRELI type, the tradesmen never succeeded in obtaining this famous domain name. For posterity, the justification of the individual will be retained in his argument: “… in life there are not only shopping centers and consumption, France is above all, a country of history, a strong history of which we can be proud!”


.BRAND - Leclerc.fr website
Leclerc.fr website


In the United States, the case of Nissan Computers is interesting. The little known IT company was registered after the name of its owner, Uzi Nissan. The eponymous Japanese company Nissan Motors evidently pouted at the deposit of nissan.com and tried to recover the domain name in question. Despite an incessant media campaign and numerous attacks, today nissan.com remains the property of Nissan Computers. Nissan Motors now uses nissanusa.com for its US business. In this case, the Nissan.com website only reflects Nissan Computers’ computer sales activity. We can instead find a strong attack against Nissan Motors. A bad buzz in action!


.BRAND - nissan.com website
Nissan.com website


What can we keep in mind through these two experiences? A relatively interesting bone marrow: the domain name, this intangible asset representing the image of a company, has not been sufficiently monitored by multinationals.

Schmidt launches its new website in dot brand: Home-design.schmidt

Schmidt is one of the first French brands of kitchens, but also the first kitchen furniture export company in France.

Schmidt group has decided to launch its new website in « .brand » (dot brand), .schmidt and thus has joined many big companies which have made this bet, like BNP Paribas (mabanque.bnpparibas), MAIF (voyagepro.maif), Club Med (corporate.clubmed) or the latest, SNCF (oui.sncf).

Schmidt chose to regroup its activity under the « home design » designation which describes well its industry. The company is not only dedicated to the kitchen world but also proposes bathrooms and “custom-made” furniture for the entire house: dressing, TV furnitures… all with a design touch.

The domain name home-design.schmidt allows on the one hand, to optimize the SEO and on the other hand, to facilitate its development and its international communication. After its launch in Great Britain at the end of April, the website arrives in Belgium, and will continue with Spain, Italia and Switzerland by July the 4th.

The domain name home-design.schmidt is easy to recognize and to remember for general public.

dot brand - Home-design.schmidt website
Home-design.schmidt website

But what is the benefit for brands to have their own extension?

In 2013, some companies (including some thirty French companies) wished to have their own « .brand » extension, in order to capitalize on their leading brand. Most of them wanted to secure and protect their naming spaces (to limit intermediaries in the chain of actors involved on a domain name registration). The purpose is also to have a domain name really distinctive and reassuring for the final consumer. The brands fight against cybersquatting, but this is an endless war. It represents an important annual budget and doesn’t limit the damages enough. The message of the brands owners of a « .brand » (dot brand) is the following: If you’re not on my « .brand » website, then you don’t buy the products or services of my brand.

This practice to communicate in « .brand » isn’t known enough by the general public. Of course, the consumers’ awareness should be increased in order to use extra caution during their navigation, and that means the domain name verification.

So having its « .brand » is a differentiating factor and will be more and more used for marketing purposes.

.brand - ma.cuisinella website
ma.cuisinella website

Why are Dot Brands dragging their feet?

Ok so here’s the thing, we’re over 2 years into the new gTLD rollout now, a new era of the Internet, and everything seems to be going swimmingly…. Or is it?

On the face of it, momentum is building. Over 16 million domain names registered in the past 2 years and 60% of them would still have been available under a .com e.g. nameshield.website and its .com equivalent nameshieldwebsite.com. That’s great because it means that New gTLD domain names are being registered instead of the equivalent .com.

But there is still one thing lacking, something I have been quite vocal about in the past, and that is the fact that very few people actually know that there has been a fundamental shift in the naming infrastructure on the Internet.

To put in another way – the general public don’t know about new gTLDs.

Two years down the line and society is still living in the dot com age and will continue to do so until the .BRAND applicants start to use their gTLDs in their marketing, promotional and operational activities.

“WWW, shhhh, dot com, dot org.”

                      Dr. Evil, Austin Powers Goldmember 2002

What has changed in 14 years?

A new .brand of concern

Here is where things start to get a bit more worrying. Of the 589 .BRAND applications received, 558 of them have signed their ICANN contracts, 289 of them have been delegated and are live on the Internet but only 64 of them are in active use and most of those still redirect to the corporate homepage, usually a .COM!

One of the most prolific .BRAND registrants is Bradesco (a Brazilian Bank) and that has an underwhelming 90 .bradesco names under management. Despite this poor showing, it is the banking sector which is leading the way. BNP Paribas, for example, has been very active promoting its .bnpparibas domain extension e.g www.histoire.bnpparibas and www.mabanque.bnpparibas


One notable, and unfortunately a rather embarrassing, example of how the .BRANDs should be promoting their domain extensions is www.booking.com which spent a fortune on its highly successful booking.yeah advertising campaign.booking.yeah-pr-still-5

The booking.yeah campaign is a shining beacon to .BRAND owners, lighting the way with a clear, concise and powerful example on how to use your new gTLD to maximum effect.

Unfortunately, no-one thought to inform the Booking.com marketing department that they could actually own the .YEAH domain extension and so this multi-million dollar advertising campaign, which is centred around a really great and very memorable domain name ‘booking.yeah’, does not and cannot resolve to a website because no one actually applied for .YEAH.

use it or lose it!

The clock is ticking for those that own a .BRAND. Not simply because there is a time limit before the registry has to be operational, nor because domain extensions have to be operated for a minimum of 10 years, but because there will undoubtedly be another round of applications.

At present owners of a .BRAND are in a privileged competitive position online when compared to counterparts which failed to apply for a .BRAND. For example, Nike owns .NIKE whereas Adidas did not apply for .ADIDAS.

There is a limited window of opportunity to steal a march on the competition in a big way by ushering in the Not Com era.

.BRAND owners know that while they procrastinate, dither and generally do nothing with their expensive and highly valuable Internet asset they are frittering away the opportunity to put clear water between themselves and their competitors online.

So why then aren’t more .BRAND owners rushing to promote their new internet address?

If I’m honest, I believe it is because to date, the champions in the majority of .BRANDs applicants have been those that understand and are responsible for the legal, technical and risk reduction benefits of owning and operating a Top Level Domain rather than the outward facing sales, marketing and strategic positioning benefits that operating a .BRAND can bring.

In my experience, when the Sales and Marketing functions truly understand what you can actually do with a .BRAND, when it is closely aligned with marketing campaigns and business development strategies, the real power of the Not Com era becomes blindingly obvious.

Andy Churley,
CMO Nameshield Group

What has become of the big dreams of the big .BRANDs ?


In 2012, ICANN received 643 applications for restricted use generic Top Level Domains extensions by brand owners. Recently, a surprising proportion of these, so called, .BRAND applications have been withdrawn, often resulting in the loss of the entire application fee ($185,000).

Why have these brand owners taken the decision to relinquish control over their very own piece of the Internet infrastructure? Is this a tactical response to a strategic direction or are they simply lacking the ideas and domain name registry experience to make the most of this investment? Jean-Francois Vanden Eynde, head of registry services at Nameshield investigates.

It is important to acclimatise the internet public to the use of the new .BRAND extensions since little has been done by ICANN to promote the overall new gTLD concept

The new generic Top Level Domain (gTLD) program has been a long time coming. And, from late 2013 onwards, new domain extensions have been live on the Internet, going largely unnoticed by the general public. At the time of writing, 548 new domain extensions have been delegated (the domain extension resolves in the root zone of the internet and is therefore live), only 96 of these are .BRAND applications, but these already include some well-known brands such as .cartier, .marriott, .nissan, .bnpparisbas and .bbc.

Note: When a domain extension is delegated it must immediately host a website on nic.extension (e.g. try typing nic.cartier or nic.marriott into the address bar of a web-browser).

Of the 643 .BRAND applications 56 have already been withdrawn by brand owners including some household names such as Amazon, General Motors (.chevy), Bloomingdales, Hasbro International Inc. (.transformers) and ProMark Brands Inc. (.Heinz and .Ketchup). It is expected that a greater number of .BRAND applicants will withdraw before the program reaches its conclusion, but what reasons do Brand owners have for turning their backs on an investment that runs into hundreds of thousands of dollars?

While, in the application phase, there was no shortage of experts offering to write a new gTLD application on behalf of a brand owner, those same experts seem to disappear when it comes to the implementation phase.

1. Competitive advantage mitigation

It was a well known fact, that often went unmentioned, that some brand owners applied for New gTLDs simply to ensure that their competition did not have a clear run at the domain extension and thereby gain competitive advantage.

If the completion does not apply and, despite being the applicant, you do not want to use the domain extension yourself, then an early withdrawal will reduce your losses and ensure that none of your competitors get to use the domain extension unless they apply for it in a future round. This type of strategy has been used by a number of brand owners in particular for generic terms.

2. Prevailing objections

During the application process, there was a period where those who had a grievance against an application could file an objection on one of four grounds. If the objector prevailed against the applicant then the application would have to be withdrawn.

For example, Ralph Lauren was forced to withdraw its application for .polo after an objection from the United States Polo Association, Inc. despite having well established trademarks for the term.

There are, in fact, very few people in the world who actually have the experience to implement and run a gTLD registry. This lack of know-how can make some companies revisit their original ‘green light’ decision.

They say that the only constant is change and its safe to say that nowadays corporations change their strategic direction and their personnel with alarming rapidity.

If key supporters of a company’s new gTLD program leave the business then it can quickly lead to the failure of a .BRAND particularly if this happens at the very top.

4. Lack of experience

One of the things that has become clear as the new gTLD program has unfolded is that, while in the application phase there was no shortage of experts offering to write a new gTLD application on behalf of a brand owner, those same experts seem to disappear when it comes to the implementation phase.

There are, in fact, very few people in the world who actually have the experience of implementing and running a gTLD registry. This lack of know-how can make some companies revisit their original decision.

5. Lack of need

Many .BRAND gTLDs will have been applied for defensive reasons without the brand owner considering the use to which a .BRAND new gTLD might be put. Since a new gTLD is really an intangible asset that involves a considerable on-going investment to maintain, it is understandable that some companies may reconsider the need for their own .BRAND gTLD.

6. Lack of ideas

For those of us that have worked in the domain name industry for a while, the idea of owning a piece of internet infrastructure to do with what you will has a considerable attraction. That is because Internet infrastructure is our business. For most brand owners, it is not. While there are few enough people on the planet that understand how to implement and run a gTLD registry, there are even fewer who know how to align a registry to support the needs of a single brand. Similarly, those who understand the needs of the brand usually do not fully understand how a .BRAND gTLD can help them realise corporate strategy.

What is noticeable by its absence is that to date very few of the .BRAND gTLDs, that have been delegated, are actually being used in anger in marketing messages, email or in fact online. The thing that will change this industry and bring us out of the .com era and into the “age of .anything” is for .BRAND tlds to actually start using their unique internet assets. Imagine what will happen when Nike starts using its .NIKE gTLD in television advertising or McDonalds starts putting its .MCD web-addresses on all of its collateral.

Before unleashing a new gTLD, brand owners must make sure that existing marketing campaigns, message infrastructure and website traffic and, above all, revenues are not adversely affected.


Less .haste more .speed

Unlike open registries, whose domain names are available to anyone, a .BRAND registry is under much less commercial pressure to launch. This is one of the principal reasons that the world is yet to see much movement in the .BRAND gTLD space. Another potential reason is that many .BRAND owners seem to view delegation as the end of something rather than the beginning of a new internet era for them.

Before unleashing a new gTLD, brand owners must make sure that existing marketing campaigns, message infrastructure and website traffic and, above all, revenues are not adversely affected. For a multinational brand there is a whole host of internal matters to address, including internal education programs, marketing style guides, email addresses and footers and effect on corporate culture.

Some brand owners may consider that this considerable upheaval is not worth the effort at this stage and may continue to use and promote their existing domain name infrastructure for some time to come.

However, brand owners should not dismiss, through lack of understanding, the long-term benefits that a new gTLD infrastructure can bring to their business. Certainly, careful consideration should be given to maximising the use, to which their new online intellectual property asset can be put.


It’s better to .Use it! don’t .Lose it!

What might brand owners do with their gTLD as soon as it’s delegated? There are a number of options that brand owners can choose to implement with their new domain extension such as:

1. Park it

Applicants who applied for defensive reasons will typically park their domain extension and register very few domains. This can be likened to purchasing an expensive Ferrari and leaving it in the garage. While this is a valid and understandable option, given the lack of available expertise within brand owners of operating Internet infrastructure, it does nothing to capitalise on a potential competitive advantage against competitors that have not applied for a new gTLD. For example, Nike successfully applied for .Nike whereas Adidas and Reebok chose not to apply. Nike now has a window of opportunity to exploit this competitive advantage.

2. Point it.

The very least a band owner should do is use this new and comparatively low cost Internet naming infrastructure to maximise traffic to its existing websites. Creating keyword domain names and forwarding the corresponding traffic to the brand owner’s main website costs little and may generate increased business and will certainly assist in search engine rankings.

3. Promote it

Some brand owners are already building their online corporate marketing strategy, if not their sales strategy, around their new .BRAND extension. They are using it to deliver important marketing messages about their values, culture and ethics to help reinforce the credibility of their brands. These informational pages can be placed on, what in .com terms would have been, premium domain names .

For example, Nike might host a website showing its strategy for environmental sustainability on sustainability.nike or ethically sourced products on fairtrade.nike or its focus on innovation and development on innovation.nike. If a brand owner wanted to do the same thing on the equivalent .com domain name they could be paying millions of dollars just for the domain name alone, if it was for sale at all. Using the equivalent .BRAND domain name should rank the site highly with the search engines and cost less than $5.

While no dates are set in stone for the opening of the next instalment of new gTLDs, brand owners and .BRAND owners alike should start preparing now.

It is important to acclimatise the internet public to the use of the new .BRAND extensions since little has been done to promote the overall new gTLD concept to the public. We saw elements of this recently at the Football world cup with McDonalds promoting www.mcd.com, which is only one step away from its .MCD extension.

Once the base elements of a new gTLD online strategy are in place, .BRAND owners should start focusing their Search Engine Optimisation (SEO) efforts and part of their Pay Per Click (PPC) budgets to their new domain extension. However, it is important to note that, while PPC can achieve rapid results it can consume large budgets and it is important that efforts to promote any new .BRAND extension should not get impede or add confusion to any existing online campaigns. SEO campaigns generally show gradual improvements over the space of 6 – 12 months, so it is important to start these campaigns as soon as possible.

While no dates are set in stone for the opening of the next instalment of new gTLDs, brand owners and .BRAND owners alike should start preparing now.

Those .BRAND owners who already have their gTLD delegated should not sit idle and let their competitive advantage disappear.

Brand owners who are considering applying in the next application round should start their planning now to ensure that when they finally get their gTLDs delegated they are ready to implement their marketing plans. And, brand owners who have no intention of applying for a new gTLD should still take stock because without a doubt this brand new namespace will affect their naming strategies, their domain name portfolios and their marketing messages.

Note: the original article, published in IPPRO magazine can be found here


Jean-Francois Vanden Eynde

Head of registry services