Protecting Your Trademarks in the World of .XXX Domain Names

As described in Reed Smith's April 22, 2011 Client Alert, to go along with .com, .net, and the other current top-level domains ("TLD's"), the formation of a new .xxx TLD has been approved for websites related to the adult entertainment industry.

Since the .xxx TLD is intended only for adult entertainment industry websites, applicants who want to set up .xxx domains will need to certify that they are in the industry; however, trademark owners may worry that cybersquatters and other entities will attempt to register .xxx domains related to well-known brands to take advantage of (and thereby damage) the brand's goodwill. Reed Smith's prior Client Alert discussed some of the initial details regarding the system set up to deal with some of those concerns. This Alert serves as an update to the most important trademark protection in the .XXX system by far: the "Sunrise B" Period.

For more information, please read Reed Smith's Client Alert, written by Brad R. Newberg, Gregory S. Shatan, John L. Hines, Jr. and Angela M. Washelesky.

Association of National Advertisers Challenges ICANN Authority to Establish New Top Level Domains

Today, in a letter to Mr. Rod Beckstrom, President, Internet Corporation for Assigned Names and Numbers (ICANN), the ANA (Association of National Advertisers) detailed major flaws in the proposed ICANN program that would permit applicants to claim virtually any word, generic or branded, as Internet top-level domains once the application window is opened in January 2012. The ANA argues that implementation of the ICANN program is economically unsupportable and is likely to cause irreparable harm and damage to its membership and the Internet business community in general. By means of this letter, the ANA with the assistance of Reed Smith, kick starts a serious effort to prevent billions of dollars of harm to brand owners and return ICANN back to the negotiating table by any means necessary.

To learn more about generic top-level domains, read Reed Smith's Client Alert.

Protecting your Trademarks on the Web Is Getting Even Harder

You may want to read this Reed Smith Alert after the holidays are over, but if you can't wait this alert will shed some important light on certain important evolving dynamics that we've written on previously within the universe of domain name registrations, and how they are likely to affect your trademark on the Web.

Changes Coming for Domain Names: Are You Ready to "Dot" Your Brands?

The domain name system is now poised to change dramatically based on a highly controversial proposal for new generic top level domains (gTLDs) approved initially in 2008 by the International Corporation for Assigned Names and Numbers (ICANN), the not-for-profit organization responsible for coordinating the Internet addressing system. Currently, the domain name system is limited to 21 "generic" gTLDs (.com, .org, .net, .info, .biz, etc.). Under the new proposal, organizations located anywhere in the world would be able to apply to operate a gTLD that corresponds just about to any word or phrase, including an organization's name or brand. This is relevant to nearly all businesses, and in particular their marketing/advertising efforts, because it places new burdens on companies to police their brands through the ocean of hundreds, if not thousands, of new channels. My colleagues at Reed Smith outlined the relevant aspects and implications of the proposal and I encourage you to read it here.

Move Over Dot Coms - Get Ready to Dot Your Brand!

The Internet as we know it is changing dramatically. Instead of using domain names ending in “.com”—the most popular of the “top level domains” or “TLDs”—organizations located anywhere in the world may soon be able to purchase a TLD that corresponds to just about any word or phrase, including an organization’s name or brand.

What Will All of This Mean to Your Business?

Consider these examples:

  • A financial services trade association might try to buy the domain “ ?? .bank” with the idea of servicing a financial community and selling second-level domains (the name to the left of the “dot”) to eligible financial institutions. A financial services company may then decide to purchase and do business from “firstnational.bank”.
  • On the other hand, First National might simply buy the TLD domain corresponding to its brand:  “.firstnational”. John Smith, a trust officer, might then be located at jsmith@trusts.firstnational; Susan Jones, mortgage banker, might be located at sjones@mortgage.firstnational, and so on.
  • A consumer goods company might consider a TLD corresponding to its brand as an opportunity to create customer confidence in the shopping experience—a kind of web authentication that distinguishes the company’s site from the many other sites and general “noise” and “static” on the web. Thus, a powerful retail clothing brand might buy the corresponding domain—and organize second-level domains according to categories such as “menswear,” “shoes,” “coats,” etc.
  • On the other hand, a company might use its valuable brand in the form of a TLD to reward its valued suppliers with the opportunity to use the TLD brand extension with the second-level domain. A global fast food chain (call it “goodchicken”) might allow its approved contractors to use “supplier.goodchicken”.

Given the hierarchical structure of the domain name system generally, there are a variety of ways in which the new TLDs might facilitate unique business/organizational objectives, while potentially enhancing the customer experience and increasing brand loyalty and awareness.

Currently, the domain name system is limited to 21 “generic” TLDs (.com, .org, .net, .info, .biz, etc.) and about 240 “country code” domains (e.g., .us, .uk, .fr, etc.). According to Paul Twomey, President and CEO of the International Corporation for Assigned Names and Numbers (“ICANN”)—the international not-for-profit organization responsible for coordinating the Internet addressing system—the expansion of the generic top-level domain space is “driven by the demand for more innovation, choice and change to the Internet’s addressing system…[and] has the potential to be one of the biggest influences on the future of the Internet.” Others disagree about the potential impact—at least as the initiative applies to existing businesses—and see little reason to spend the money for another top level domain other than, perhaps, very reluctantly as a defensive measure to keep others out of their space. Some in this camp resent the introduction of the new TLDs as creating complexities and costs that far outweigh any benefits.

Click here to read the full alert.