Policing how your trademark or business name appears on the Internet is important to insure it is being displayed in the manner you want. Even if your business’s online presence is minimal, recent changes in how generic top-level domain (“gTLD”) names are assigned could have significant impact on your company. These changes will affect how your mark may appear on the Internet and what tools are available to protect yourself.

To understand the changes, it may help first to understand the terminology: A top-level domain (TLD) is a domain at the highest level in the hierarchical designation of website names. For example, “.com “is TLD, as are .gov and .edu. There are different types of top-level domains. Generic top-level domains, or gTLDs, are a distinct group of top-level domains that do not have a country affiliation and are not sponsored by a particular organization. GTLDs include .com, .info, .net and .org, while sponsored TLDs (“sTLD”) include .mil, .gov and .edu. Management of most top-level domains is handled by the Internet Corporation for Assigned Names and Numbers (ICANN).

In March ICANN approved a new sTLD: .xxx. Further, in June ICANN announced its approval to expand the number of gTLDs available. Following this announcement, the limited number of TLDs will become as quaint as the idea of having only three TV channels. As the owner of a business and/or a trademark, it is important to be aware of how your mark may be used or infringed upon by these new developments.

With the creation of the .xxx sTLD, businesses in the adult entertainment industry will begin acquiring new domain names which have not been previously available. The .xxx domain, registration will begin this fall for new addresses, such as www.acme.xxx. While this particular domain has been designed solely for the use of the adult entertainment industry, its creation presents an expansion of the possible websites that have similar names to your own. You may be aware of domain names that are similar to yours within the TLDs of .com or .net, but you will now have to be aware of those with xxx. Simply searching for your business might take an Internet user to a website you would rather not have your business affiliated with. ( Just as this happened with sites early on in website creation, such as XYZcompanysucks.com, there are companies that will quickly take advantage of this expansion, and purchase domain names such as XYZCompany.xxx. ) To prevent your mark or business from being associated with this industry, or infringed by a new registration on this domain, there are several steps to take and tools too use:

Register your Trademark with ICM

ICM, the registry that has contracted with ICANN, has set up a tiered registration period that allows for different “classes” of registration. Concurrently running, Sunrise A and Sunrise B registration opened on September 7, 2011 and remain open for fifty-two days. Sunrise A is for “Members of the Sponsored Community” (online adult entertainment industry participants and those supplying products or services to that industry) and Sunrise B is for non-members wishing to block the use of their intellectual property. These non-members may submit an application to block their trademarks from xxx. At the close of the Sunrise Period, if no conflicting application by a Sunrise A has been filed, these names will be reserved from registration (blocked).

Disputes over intellectual property rights issues will be handled by the rapid evaluation service (“RES”). ICM has also instituted the Charter Eligibility Dispute Resolution Policy (CEDRP). Additionally a trademark holder can proceed under the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP).

Conclusion

With the creation of the .xxx sTLD, many businesses in the adult entertainment industry will be seeking to expand their online presence. Such expansion could potentially put your trademark in danger of being infringed upon. It is essential for a small business owner and/or a trademark owner to stay informed as to the risks inherent in this change, and the mitigation measures available to them. Stay tuned to this blog for further discussion on the, I will ramifications for businesses from ICANN’s expansion of gTLDs.