Starting in January 2012, ICANN (the organization that administers domain names on the Internet) will accept applications for custom gTLDs (global top level domain), which will stand alongside the existing 22 gTLDs that you are familiar with, such as .com and .net.
From January 12 to April 12, 2011, and for the paltry fee of $185,000 and an annual maintenance fee of $25,000, you too can have your very own gTLD. In order to apply, applicants must prove a bona fide claim to the domain they are registering (i.e. connected with a business). Trade-mark rights will be examined by the application board, but trade-mark owners are also affected in two ways:
First, trade-mark owners will have an opposition period to oppose any applicant who is attempting to register a gTLD that infringes on an existing trade-mark. This means that a trade-mark owner of “LOSERFISH” associated with trucker hats can oppose the registration of http://www.anything.loserfish.
Second, the gTLD owner will be responsible for guarding the registry for second-level domains associated with the gTLD. For example, our “LOSERFISH” owner would be concerned with domains such as http://www.loserfish.hat, or http://www.loserfish.trucker. Unfortunately, with the expansion of gTLDs, this may result in a flurry of infringements which the trade-mark owner should challenge, leading to additional costs.
In addition to the new gTLDs, a .xxx domain will be added to the registry for the adult entertainment industry. Trade-mark owners should be concerned that their trade-marks may be used in this domain registry. For example, our trucker hat businessperson may not want there to be a http://www.loserfish.xxx website. To prevent this, there is a 30 day SUNRISE window commencing in September 2011. Legitimate trade-mark owners can “opt-out” of the .xxx domain by filing an application with ICANN for about $300. This will prevent the registration of that particular trade-mark within the .xxx domain.
WHAT CAN I DO?
I would recommend that trade-mark owners apply for the .xxx opt-out system as a cost-efficient method of preventing association with the adult industry, as well as preventing infringement litigation down the road, especially considering the potential for harm to a business’ goodwill.
Contact me for more details.