Top-level domains (TLDs) appear in internet addresses as the string of letters following the last dot, such as the “com” in www.kslaw.com. Prior to this year, while there were hundreds of country code top level domains (ccTLDs) ranging from .ac (Ascension Island) to .zw (Zimbabwe), there were only 21 generic top level domains (gTLDs) like .com, .org, .net.[1] This will soon change.

Starting on January 12, 2012, applications for new gTLDs covering any letter string of three or more letters will be accepted by the Internet Corporation for Assigned Names and Numbers (otherwise known as ICANN). The application window will close April 12, 2012.

Many brand owners are now struggling with the issue of whether or not to apply for .BRAND. One factor is the cost, since the application fee alone - without taking into consideration the costs of running the new domain registry - is $185,000. The new gTLD program also has brand owners concerned about enforcement and infringement problems created by the potential for increased cybersquatting and fraud across multiple new gTLDs. While there are rights protection mechanisms in place, the onus will still be on the brand owner to enforce these mechanisms. Details can be found in the new applicant guidebook, posted on September 19, 2011 on a new microsite created by ICANN to promote the new gTLD program.[2]

Meanwhile, brand owners are getting a sense of costs associated with new gTLD launches due to the recent launch of a new adult-themed generic top level domain - .xxx. ICM Registry, the company responsible for .xxx, is providing a "Sunrise" period during which trademark owners can, for a fee, file applications to block their brand names from being registered as domain names in .xxx. To qualify for a Sunrise filing, the brand owner must have a registration covering the mark issued on or before September 1, 2011. The block will only cover an exact match of the registered mark.

Any domain names reserved during the Sunrise period will resolve to a standard informational page that indicates that the name is reserved. The current rules provide that blocked domain names will be classified as “reserved” and publicly available WHOIS database records will identify the domain name registry as opposed to the brand owner. The block lasts for 10 years.

There will also be a process to challenge infringing .xxx domains similar to that in place for other TLDs. Under current UDRP rules applicable to .com and other gTLDs, for example, a brand owner can recover a domain name that is identical or confusingly similar to its trademark where the domain owner has no rights or legitimate interests in the domain name and the domain name has been registered and is being used in bad faith.

The fee for the Sunrise filing to block brand.xxx domains varies depending upon the registrar used but is generally around $200 per mark. This process can quickly become very expensive for owners of multiple brands, but the fee is still much less than the likely cost of recovering brand.xxx using a dispute resolution procedure where the filing fee alone is about $1500. Act quickly if you are interested in blocking your mark, as the Sunrise Period runs only through October 28, 2011.[3]