As forecasted in a previous entry on this blog, on April 18, 2015, the Internet Corporation for Assigned Names and Numbers (“ICANN”) delegated a new adult entertainment generic top-level domain (“gTLD”) to the ICM Registry, “.SEX.” Now, brand owners who have registered their trademarks with the Trademark Clearinghouse (“TMCH”) will have the opportunity to block cyber-squatters from registering their trademarks on the “.SEX” gTLD during the “sunrise period” from September 1, 2015-October 1, 2015, for a registration fee of $200. The sunrise period is a priority registration phase which allows brand owners to be the first to register their domain names. During this sunrise period, only those entities and individuals who have registered trademarks with the TMCH will be able to register domain names on the new .SEX gTLD registry.

ICM Registry will also afford current .XXX registrants the opportunity to obtain identical domain name registrations .SEX gTLDs from October 5, 2015-October 30, 2015, also for a registration fee of $200.  For example, if a brand owns the domain name COMPANY.XXX, the brand would also be able to obtain registrations for COMPANY.SEX during this period.

On November 4, 2015, the .SEX gTLD registry will open to the general public.  As such, any individual or entity will be able to obtain domain name registrations for this gTLD on a first come, first serve basis.  The general registration fee will cost brand owners $125, however, ICM Registry will also be keeping a list of premium domain names that may be priced higher than the regular general registration fee.  Brand owners who wish to avoid the potential association of their brand with unsavory content should take advantage of either the sunrise period with the TMCH or, if eligible, the domain name matching program to secure their core marks on the .SEX registry

If a brand has not yet registered its trademarks with the TMCH, it is still possible to do so during the sunrise period for .SEX.  Registration of a brand’s trademarks with the TMCH provides brand owners priority in registration for not only the .SEX gTLD, but for all new gTLDs.

Over the coming years, this explosion of new gTLDs is only expected to continue to grow.  As such, brands seeking to maintain control over their online identity should maximize use of the available tools to protect their brand in the ever-changing landscape that is the Internet.

For questions about new gTLDs or to register your brand with the Trademark Clearinghouse, please contact Ryan Compton (ryan.compton@dlapiper.com), David Kramer (david.kramer@dlapiper.com), or  James Stewart (james.stewart@dlapiper.com).