FairWinds Partners .ASIA Briefing Paper

Introduction

Since the announcement of ICANN’s approval of the .ASIA domain name extension, a great deal of information has been made available and communicated by the .ASIA Registry and by many domain name registrars.  Until recently, the registry had yet to finalize all components and detail who will serve as the Verification Agent.  With the data now finalized and Sunrise 2a only a few months away, FairWinds Partners is providing this brief to assist companies in navigating through this launch.  The purpose is not to restate what has already been provided, but rather to provide objective information and high-level strategies on what to secure and how to proceed with the launch in a way that gives you the best chance of securing the names you require.

What is .ASIA?

.ASIA is a sponsored Top Level Domain being organized and managed by DotAsia Organisation Limited, which is a membership-based not-for-profit located in Hong Kong.  It was created for the purpose of implementing a regional TLD for the Pan-Asia and Asia-Pacific community.

.ASIA itself encompasses and is representative of 73 countries spanning from Turkey, to the Asian mainland, to Australia in the Pacific. Nearly 4 billion people (60% of the world’s population) live in the countries that comprise the DotAsia Community.

Should I bother with .ASIA?

The purpose of a domain name registration is to protect and to promote a brand or an interest online.  Since the majority of Internet users practice direct navigation, and the prevalence of cybersquatting due to the exploitation of policy loopholes continues to increase, the value of making wise choices on what domain names to own and to use has become increasingly important. 

The key to determining what and where to register depends upon a combination of your internal strategy and the external factors surrounding each TLD.  Your internal corporate domain strategy will dictate the “what,” or specifically which character strings are in scope, while the external factors will help to refine that list to the optimal set of TLDs.  External factors are of significant importance since registration of domain names may not be necessary if Internet users will not be typing those extensions in browser bars. If extensions are not widely used, then there is little benefit to owning them beyond defensive protection.  Similarly, parties that wish to cause harm through trademark infringement or other means may not register names if they are unable to attract sufficient Internet traffic to successfully carry out their activities. 

When considering the external factors that will impact .ASIA, it is helpful to examine the launch of .EU and .EU’s adoption one year later.  .EU, which represents the European Union, had a TLD launch that was rife with problems ranging from validation errors to registrar submission errors to massive abuse and loophole exploitation such as the rush on BENELUX trademarks.  Whether because of the problems surrounding the launch or due to the fact that very few registrants chose to market themselves via this new avenue, the adoption and usage of .EU has been very limited.  Even though over two million .EU domain names have been registered, only a handful are being used today.  If the most popular sites in the world, such as Google.com, Yahoo.com, and Mypsace.com own but do not use their equivalent .EU names, how valuable are these names really?  Based upon the lack of usage, and the corresponding lack of traffic that goes to .EU sites, the current value and need for the names does not go much beyond defensive protection.  Even the need for extensive defensive protection is now in question because the extension does not garner any considerable traffic.

While .EU is clearly an extension that has not lived up to its marketed usage or its potential, DotAsia aims to improve the launch processes in an effort to create trust between registrants and faith in the new name space.  These improvements, which will make the process for successfully securing a domain name much easier for a brand owner, were implemented in hopes of increasing the adoption of the TLD.  Highlights of the launch improvements as compared to .EU include:

• A multi-phased sunrise period for exact match trademark registrations in addition to a period where interested parties can secure trademarked names plus derivative names (such as FAIRWINDSPARTNERS.ASIA and FAIRWINDSCONSULTING.ASIA)
• Applications are awarded on merit and not based upon when the application was received (preference is not assigned on a first-come first-served basis)
• The ability to correct errors in an application post submission

Although the launch of .ASIA appears to be much more user-friendly than .EU, and although the Pan-Asia and Asia Pacific region of the world is demonstrating tremendous business growth and the population of this region makes up nearly 60% of the global population, we believe that it is too early to know for sure how widely adopted and popular this extension will be.  While the two regions differ significantly, we believe that the adoption of the .EU TLD could be indicative of what will occur with .ASIA.

From a pro-registration perspective, .ASIA presents a business opportunity since it represents a collection of countries that is large in scope both in terms of population and economic prowess.  Since many of the countries that are part of the DotAsia Community have very restrictive registration policies (examples include Japan’s .co.jp and Thailand’s .co.th), .ASIA offers brand owners a means by which they can reach audiences they have not reached before.

In addition, as a regional TLD, the extension offers brand owners the ability to market broadly to the region as a whole.  For example, a hotels company might register www.brand.asia and offer information on all of the properties for that brand that operate in the DotAsia Community (however, to be relevant the brand owner must be prepared to translate content in all of the most relevant languages and character sets).  Since .ASIA will offer businesses a unique opportunity to appeal to an entire region and since many cybercriminals attempt to conduct their business from regions covered by .ASIA, cybersquatters will look to capitalize on the opportunity presented by this launch in hopes that the TLD becomes popular among direct navigators.

Taking these factors into account, we believe that it is important for brand owners to put together a strategy for this launch and to secure certain key names to protect their brands. Despite the scope and traditional restrictiveness of this region, we do not foresee a large influx of traffic to .ASIA. Thus, each brand owner’s strategy for which names to register should be conservative and limited to protecting key brands in order to prevent clear and direct infringement.

What names can I apply for?

During the Pioneer program, Sunrise 2a and Sunrise 2b brand owners can submit applications based on a valid registered trademark.  Pioneer program names must use a trademark from one of the 73 representative .ASIA countries.  Sunrise application names can use a trademark registered anywhere.

In general, each of the names applied for in Sunrise 2a and 2b should be an exact match of the registered mark.  For registered marks that include words, devices, pictures or other elements, the name applied for must exactly match the name text or word contained in the mark.  An example of an acceptable Sunrise 2b name is FAIRWINDSPARTNERS.ASIA

Slight variations of these marks may also be applied for.  Detailed information regarding acceptable replacements and omissions can be found later in this document under “What can be registered?”.

Sunrise 2c offers interested parties the ability to submit names, which contain a registered trademark plus additional words or characters that appear in the class description of the trademark.  An example of an acceptable Sunrise 2c name is FAIRWINDSPARTNERSCONSULTING.ASIA.

The .ASIA Registry will give no preference to applications based on where the mark is registered.  If a brand owner has many registrations for the same mark in different countries, it should not matter which one is submitted for application purposes as long as it meets the verification requirements.

FairWinds recommends using established US, UK, or other English language based trademarks to reduce the potential for confusion by the validation authority during the application process.

Additional documentary evidence including original copies may be requested by the .ASIA Verification Agent if necessary, though this appears to be a rare possibility.

What is the Pioneer Domains Program?

The Pioneer Domains Program was designed by the DotAsia Organisation to promote active marketing and usage of .ASIA domains.  The Pioneer Domains Program precedes the Sunrise phases and is targeted towards .ASIA registrants interested in maximizing a .ASIA domain name of interest and towards those applicants registering for reasons beyond protection.  Domain names not allocated in the Pioneer Domains Program and during the .ASIA Reserved Names phase will be allocated during the Sunrise and subsequent phases.

All applicants during the Pioneer Domains Program are responsible for ensuring that their name submission does not infringe on the rights of others.  There will be a comprehensive challenge process for those that feel they have stronger rights to a name than a Pioneer applicant.  The .ASIA Registry is working to modify the UDRP so that usage will not have to be established for these names.  Instead, a panel overseeing the challenge process will take into account the purpose of the names as stated in the Pioneer Domains Program proposal that was submitted.

The proposals for the Pioneer Domains Program should be submitted to DotAsia and require an executive summary, a business and marketing plan, operational commitments and financial support, and community and social contributions.  The proposal forms can be found at http://pioneer.domains.asia/.

The Pioneer Domains Program has three categories of .ASIA Pioneers: Community Pioneers, Global Brand Pioneers, and Partner Pioneers.  The Community Pioneer program is based on commonly used words and phrases (i.e. generic words).  A list of names proposed by DotAsia for the Community Pioneers is available on the DotAsia Web site: http://pioneer.domains.asia/prospects.html.  Community Pioneers can register additional generic names not included on this list.

The Global Brand Pioneers program is targeted towards brand owners.  In order to qualify as a Global Brand Pioneer, a brand must demonstrate trademark registrations in multiple countries, with at least one trademark in the DotAsia Community, investment of at least US$10,000 into the development and promotion of the brand and the domain name being applied for, and substantial sales in connection with the goods and services connected with the mark.  Brand owners must agree to proactively market the .ASIA name awarded to them.

The Partner Pioneers program is available to service and technology partners of DotAsia.  These partners include .ASIA Accredited Registrars, DotAsia Sponsors and Co-Sponsor Members, technology and service providers as well as other entities that have been heavily involved in the development and promotion of the .ASIA TLD.  There are specific requirements that registrars, DotAsia Sponsors, service partners, technology partners and other partners must meet in order to qualify.

Submitting a proposal for names during the Pioneer Domains Program requires development commitments, marketing commitments, joint marketing commitments and community contributions/commitments from .ASIA Pioneers. 

The Marketing Commitment is a minimum deposit of US$10,000 for each domain name included in a proposal.  This “deposit” will be returned to successful applicants if they demonstrate documented proof of marketing and advertising associated with the proposed business.  The marketing commitment is not capped at US$10,000 however.  The amount of the marketing commitment pledged by a Global Brand Pioneer applicant will be one consideration in the awarding process. DotAsia maintains, however, that it will not be the sole determining factor for allocation of a name during this phase.  At least 50% of the promotional activities associated with the name must be allocated to non-Internet media such as television, print and movies.

Failure to uphold the developmental commitments that are part of the Pioneer Program will be considered a breach of contract and may result in repossession of the name by the DotAsia Organisation.

Overall Requirements for .ASIA Names

Applicants must meet the Charter Eligibility Requirements, which require one contact for the domain name to be a legal entity in the Pan-Asia and Asia Pacific community, which is defined as a natural person or juristic entity.  This legal entity is referred to as the Charter Eligibility Declaration Contact (CED Contact).  According to the DotAsia Organisation, the CED Contact is “a contact that is designated to make the declaration that it meets the Charter Eligibility for registering a .ASIA name.”  Many of the .ASIA Accredited Registrars are set up to serve as this local contact if one is needed.

Who is validating .ASIA applications?

Verification Agents chosen by the registry will validate all applications during Sunrise 2. Deloitte and Touche Tohmatsu, will serve as the principal worldwide Verification Agent and AGIP (Abu-Ghazaleh Intellectual Property) will serve as the Verification Agent for the Middle East and North Africa.  During Sunrise 3, applications will not be validated, but will be posted and can be challenged.

What is required for successful validation in specific Pioneer and Sunrise phases?

.ASIA will require various data in order to verify an applicant’s rights to a name they have applied for.

During the Pioneer Domains Program, those applying to be Global Brand Pioneers must demonstrate trademark registrations for the brand in multiple countries including at least one in the DotAsia Community, substantial investment into the development and promotion of the brand both online and offline, and a substantial sales threshold in connection with goods and services associated with the mark.

A Pre-Sunrise period preceded Sunrise 1.  During Pre-Sunrise, governments were able to submit a list of names relevant to country names, major provinces and cities that they wished to reserve.  Also eligible to be reserved during Pre-Sunrise were names and marks already in use by the governments.  The validity of these requests will be determined through the Governmental Acknowledgement Reference (GACKREF).  All names that were reserved and validated during Pre-Sunrise will be activated during Sunrise 1.

During Sunrise 2, applicants will be asked to provide the exact word or phrase in the mark that relates to the domain name applied for, the current registration or serial number for the mark, the location where the right is established (provided in the WIPO two-letter format), the dates on which the mark was applied for and became effective, the class of the mark according to the NICE classification system, verification that the applicant holds rights to the mark as the original owner and the Sunrise period during which the applicant wishes to apply.  All of this information is part of the application.  Additional documentary evidence is not required at the time of application, unless requested by the Verification Agent.

During Sunrise 3, applicants must submit registration information establishing rights to the domain name applied for.  The required information will include the name of the entity as it applies to the name applied for, the registration number for the registered entity, the locality where the entity is registered, the date on which the entity applied for registration, the date on which the entity was formally registered, the type of entity and the Sunrise period during which the applicant wishes to apply.

Applicants during Sunrise 3 will also be required to provide either a record of registration, a certificate of incorporation, a certificate from a register, notary or public authority indicating that the entity is in good standing or some other certified document indicating that the entity is in good standing.

What can be registered during Sunrise phases 2 and 3?

• Names that are an exact match of the registered trademark
• Spaces that appear between words, letters or other elements of the mark can be omitted or replaced by a hyphen.
• Partial matches will not be allowed by the .ASIA Registry, except during Sunrise SR2c.
• Other punctuations and special characters present in the Registered Mark that can be omitted or replaced with hyphens include, but are not limited to: ~ @ # $ % ^ & * ( ) _ + = { } [ ] | \ / : ; ’ , . ?
• Punctuations and special marks can be spelled out in full using ASCII (American Standard Code for Information Interchange).  For example, B+C company could register bplusc.asia or bandc.asia.  Either application would be considered an acceptable match.
• Indications such as TM, SM and ® can be eliminated from the name that is applied for.  Identifiers such as “Ltd.,” “Co. Ltd.,” and “Inc.” can also be omitted from the domain name that is applied for.
• Unless transliterations or other spelling variants of the original mark are specifically registered, they will not be considered an acceptable replacement of the registered mark for .ASIA domain registration.

The Verification Agent will determine appropriateness of any replacements and additional information to validate the appropriateness may be requested.

Documentary Evidence that may be Requested

For SR2a and SR2b

• Electronic copy of an official document issued by a trademark office or registry, or an extract from an official online database operated and/or managed by the corresponding trademark office or registry, indicating that the trademark is registered or applied for on or before March 16, 2004 (SR2a) or December 6, 2006 (SR2b).
• If the applicant is an assignee of a Registered Mark, applicant may be asked to provide electronic copy of the declaration signed by the assignor and the assignee stating the effective date and expiration date of the assignment, conditions or limitations of the assignments and an express statement that the assignee is authorized to apply for domains on its own or on behalf of the assignor.
• Electronic copy of a document certified by a legal practitioner stating that the trademark has been used by the applicant for the class in which it is registered, the date of first use of the mark by the applicant, the authenticity of the online database extract establishing the mark’s registration and application date and the authenticity of the license or assignment giving rise to the applicant’s right to Registered Mark.
• The evidence provided must clearly state that the Registrant Contact in the application is the reported owner, co-owner or assignee of the Registered Mark.

For SR3: Applicant must supply at least one of the following:

• The registration record relating to the Applicant entity at the relevant registry
• Certificate of incorporation (and certificate for any subsequent change of names)
• Certificate of good standing from an official register, a competent public authority, or a notary public
• Other equivalent certified document indicating that the entity is duly formed and in good standing

The registry has the right to request original copies of any documentary evidence provided electronically.  Should original copies be requested, domain applicants are required to send the copies through a shipping method that can be tracked.

How do I submit my application?

You must submit your application through a .ASIA Accredited Registrar for all Sunrise phases.  The list of .ASIA Accredited Registrars is available at http://www.dotasia.org/about/register.html.  In most cases, the corporate registrar that you use for the management of your domain name portfolio will be able to process your applications.

Many registrars are offering services whereby they will handle the compiling of and submittal of the necessary data.  That said, you should ensure that your registrar, with their submittal, includes all requested bibliographical data and that it can be validated without confusion or uncertainty by the Validation Agent.

How are names awarded?

During the Pioneer Program, names will be awarded based upon the proposal submitted to the registry.  DotAsia will be reviewing proposals and awarding .ASIA domain names based upon the level of commitment to the TLD expressed by the applicants. 

During the Sunrise phases, names will be awarded to the successfully verified applicant if there is only one.  If there is more than one successfully verified application for a name, the name will be auctioned.

What happens when my name goes to auction?

An auction occurs when more than one application for a particular name has been successfully verified.  Auctions will be open only to applicants with successfully verified applications.  The identities of all successfully verified applicants participating in the auction will be available to each auction participant.

Applicants should also consider whom they are bidding against in a .ASIA auction.  Although every participant in the auction will have a successfully verified right to the mark, the amount of budget they can allocate to acquire the name may vary greatly.  By determining the competitive landscape of the auction, brand owners can make an informed decision as to whether they will participate or not.

Pool.com will be the auction partner for all .ASIA auctions, providing technical and customer support along with a “fully featured” auction platform.

Is it beneficial to submit applications through more than one registrar?

Unlike some previous launches where names are awarded on a first-come first-served basis, submitting applications through multiple registrars is unnecessary because it will not increase the chances of getting the name applied for.  All applications will be treated as if received at the same time and any names with more than one successfully verified application will be auctioned.

Is there a reconsideration process if my application is denied for some reason?

Yes.  One way that DotAsia has differentiated its launch from previous new TLD launches is by offering applicants a chance to provide additional information should an application be denied.

Applications will be denied if the Verification Agent is unable to successfully verify a claim to a .ASIA domain name.

Applicants will be notified that the application was denied and given the opportunity to seek reconsideration within 7 days of the denial notification.  A reconsideration fee will apply, though the amount of the fee has not yet been disclosed.  Applicants can provide additional information to support their claim to the domain and after reconsideration the application will either be declined or accepted.

Is there a Dispute Resolution Process for .ASIA? 

.ASIA applicants are allowed to enforce their rights to a domain name against another applicant through ICANN’s Uniform Dispute Resolution Policy (UDRP) and the approved UDRP arbitration services providers, or other accredited tribunal.

Can I apply for a .ASIA Internationalized Domain Name (IDN)?

Internationalized Domain Names, or IDNs, are web addresses in languages and character sets other than English/ASCII.

.ASIA will not accept IDN registration applications during the Pioneer program or the Sunrise phases.

.ASIA will eventually offer IDN services, but will launch with ASCII services first.  IDN services will be launched language-by-language according to IETF IDN standards and ICANN IDN guidelines.

Additional information on the IDN services that will be offered by .ASIA has not been released.

Understanding all of this – what should you do?

A Summary of FairWinds’ Strategies to Succeed in the .ASIA Launch

Much of the value of .ASIA names will be determined by the long-term usage and adoption of the extension, thus registering a large number of names may not provide any tangible return on investment in the short term.  This is particularly true if the local ccTLDs for the .ASIA countries (such as .CN, .TW, etc.) remain the extensions of choice for Pan-Asia and Asia Pacific Internet users, which we expect to occur.

Based upon an analysis of the launch, the marketplace, and other factors, FairWinds recommends exercising a conservative approach to the .ASIA launch both during the Pioneer Domains Program and the Sunrise phases.  We recommend securing Tier 1 brands and marks in .ASIA during the Sunrise phases.  For most domain strategies, Tier 1 marks will be the company name and any marks of global and critical importance.  In certain instances, based upon business needs, it may be advisable to secure additional regionally significant brand names.

Since this program requires the applicant to have a trademark corresponding to the name applied for, there is little threat of cybersquatting during this phase.  The Pioneer Domains Program requires commitment of marketing budget and efforts, so unless there is a known trademark conflict or the name in question is to be used by the business and is deemed critical, we do not recommend proceeding with applications during the Pioneer Domains Program.  Only companies that are interested in investing time and money into the active development of the .ASIA TLD should apply to be a Global Brand Pioneer.

In preparation for the launch, we recommend identifying the list of marks to register and compiling corresponding trademarks that will be used.  If you do not have a domain name strategy, a good starting point in identifying a list of names will be to look to your trademark portfolio for guidance.  Names that are globally top-of-mind, such as major global brands and your company name would be common Tier 1 names.  Next, identify the local contact that will be used for the CED and local presence requirement.  Domain name registrars can assist in providing this if you are not able to satisfy this internally. 

It is advisable to have your lists of names and corresponding documentation to DotAsia by August 31, 2007 if you plan to participate in the Pioneer Domains Program and to a registrar by the week of September 18, 2007 for Sunrise applications.  Also, review value added service offerings and pricing with your registrar due to the fact that many are able to streamline the process for you.

Even though applicants will have opportunities to correct/revise submitted materials post submission, we recommend that applicants request a backup copy of the application, bibliographical information and documentary evidence from their registrar in the format that they will be sending to .ASIA to ensure accuracy.  In addition, after registrar submission request a copy of the exact file that was sent on October 9th to again validate that the registry has received the proper application so as to be able to proactively handle any and all inconsistencies.

Also, think ahead and prepare for circumstances including the reconsideration process or an auction.  If the name applied for is of great importance to your business, you will want to be able to gather additional data required for approval and/or budget for an auction quickly.

Lastly, ask for help.  DotAsia has been very helpful in providing information for this brief and others like it.  Similarly, they are more than likely willing to assist you directly. In addition, FairWinds Partners is available for strategic direction and advice on this launch or on objective and expert domain strategy discussions as needed.

Summary of Advice: