In 2011, the Internet Corporation for Assigned Names and Numbers (“ICANN”) made waves by approving the first adult entertainment industry-specific top-level domain (“TLD”), “.XXX,” administered by the ICM Registry. At that time, many brand owners sought to protect their trademarks from cybersquatters on the .XXX registry by obtaining .XXX domain name registrations for one or more of their trademarks before the registry opened to the general public during the sunrise period.
On December 6, 2014, ICANN delegated two new adult entertainment generic top-level domains (“gTLDs”) to the ICM Registry, “.ADULT” and “.PORN.” Brand owners who have registered their trademarks with the Trademark Clearinghouse (“TMCH”) will have the opportunity to block cybersquatters from registering their trademarks on the “.ADULT” and “.PORN” gTLDs during the sunrise period from March 2, 2015-April 1, 2015. During this sunrise period, only those entities and individuals who have registered trademarks with the TMCH will be able to register domain names on the new .ADULT and .PORN gTLD registries.
ICM Registry will also afford current .XXX registrants the opportunity to obtain identical domain name registrations for one or both of the .ADULT or .PORN gTLDs from May 6, 2015 – May 31, 2015. For example, if a brand owns the domain name COMPANY.XXX, the brand would also be able to obtain registrations for COMPANY.ADULT and COMPANY.PORN during this period.
On June 4, 2015, the .ADULT and .PORN gTLD registries will open to the general public. As such, any individual or entity will be able to obtain domain name registrations for these gTLDs on a first come, first serve basis. Thus, brand owners who wish to avoid the potential association of their brand with unsavory content should take advantage of either the sunrise period with the TMCH or, if eligible, the domain name matching program to secure their core marks on the .ADULT and .PORN registries.
If a brand has not yet registered its trademarks with the TMCH, it is still possible to do so prior to the beginning of the sunrise period for .ADULT and .PORN. Registration of a brand’s trademarks with the TMCH provides brand owners priority in registration for not only the .ADULT and .PORN gTLDs, but for all new gTLDs. A further benefit of registration with the TMCH is that third-parties who attempt to register a domain name that is identical to a trademark registered with the TMCH will be notified of the owner’s rights in such trademark and will be required to acknowledge the brand owner’s rights prior to completing registration of the domain name. Should the third-party registration be completed, the brand owner will be notified of the potentially infringing domain name registration by the TMCH. This notification allows brand owners to proactively enforce their trademark rights against cybersquatters and/or trademark infringers at the outset of a potentially infringing use. On the whole, the TMCH provides brands with greater control over third-party uses of their trademarks on the Internet.
The first new gTLDs were delegated in October 2014. Since that time, more than 500 have been delegated. These range from brand names, city names, and generic words like .ADULT and .PORN. Over the coming years, this explosion of new gTLDs is only expected to grow. In fact, ICM Registry currently appears to be in the process of obtaining the “.SEX” registry. As such, brands seeking to maintain control over their online identity should maximize use of the available tools to protect their brand in the ever-changing landscape that is the Internet.