The Internet Corporation for Assigned Names and Numbers (ICANN) has recently approved a controversial new .xxx top-level domain (TLD) that is meant to give the adult entertainment industry a clearly marked home on the Internet. This addition to familiar TLDs like .com, .biz, .org, .net and others will alert Internet users that a website contains adult content and will presumably make it easier to block such online content. What does this mean for your business? Virtually every business that offers goods or services under a brand name has trademark rights. The creation of the .xxx TLD will allow cybersquatters to register your trademark as a .xxx domain name. Trademark owners who value their reputation and seek to avoid an association with the adult entertainment industry should consider taking simple proactive measures now to reduce the likelihood of engaging in costly administrative or legal proceedings later.
The .xxx TLD will be operated by Florida-based ICM Registry. ICM has set up an opt-out mechanism that will allow most trademark owners of nationally registered marks to prevent third-party registration of their marks as .xxx domain names before the .xxx TLD is launched.
Here's how the opt-out mechanism works: For 30 days starting around September 2011, there will be a "sunrise" period when trademark owners can defensively register their marks for a one-time fee, placing them on a reserved list and preventing others from registering their marks as .xxx domain names. The fee to opt-out has not been finalized, but is expected to be around $300 per domain name. If you register your trademark during the "sunrise" period, anyone attempting to access your trademark at the .xxx TLD will land on a generic page stating that the domain name has been reserved. To guarantee you are well positioned when the "sunrise" period opens, we recommend that you pre-register your mark now for free at ICM's website, http://domains.icmregistry.com/.
This new development is an important reminder to companies to consider registering domain names in all available TLDs that correspond to their primary trademark and website to avoid the expense and hassle of fighting for them later, including in foreign jurisdictions where a company has a bona fide intent to do business.
Monitoring your domain name portfolio is just one aspect of protecting and promoting your brand online. Other considerations include: 1) selecting a strong mark when launching your brand or business; 2) filing for a trademark registration with the U.S. Patent and Trademark Office (PTO) and where appropriate internationally; 3) monitoring your trademark online with Google alerts and other Internet tools; 4) policing the Internet and PTO database for trademarks that are identical or confusingly similar to your own; and 5) developing internal guidelines on how your company can use social media to strengthen brand awareness and trademark rights.
Brand owners should also be aware that in addition to creating the .xxx TLD, ICANN has announced additional plans to expand TLDs. ICANN has authorized the creation of new "vanity" TLDs, paving the road for an unlimited number of TLDs reflecting familiar brands such as .cocacola or simply generic TLDs such as .shop or .movie. Vanity TLDs will be costly at $185,000 for the application fee and $25,000 for the annual fee, as well as third party costs. ICANN is also expanding domain names to include Chinese, Cyrillic and other non-Latin scripts.
If you have questions about how to protect your brand online, please contact Kathryn Legge or Dina Leytes.
Copyright 2011. All rights reserved. Griesing Law LLC
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