By James Stewart and David Kramer

Following the publication of the article titled .SUCKS: A Questionable Future?, posted on April 13, 2015, the author received an unsolicited email from John Berard, CEO of Vox Populi Registry, Ltd. (“Vox”), the registry responsible for the controversial .SUCKS gTLD, responding to the article.  In an email, Berard shares his perspective on the launch of the .SUCKS registry and the controversy that has ensued.  In particular, Berard notes:

The mission of the Vox Populi Registry is not to just sell names, but to help create a new destination, one where criticism can be heard and engaged.  And, if they arise, errors corrected.  Right now, companies don’t always get the chance to correct the record.  Heck, a lot of what shows up in search results can’t even be run to ground.

From the beginning I have said there is no need (it is certainly not mandatory) for a company to register its dotSucks domainJust be willing to engage.  In 2015 with 20 years’ experience of the Internet as a business platform, I would not have thought this to be so radical an idea.” (emphasis added)


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By James Stewart 

In response to a veritable deluge of concerns from brand owners over the .SUCKS domain name registry’s pricing structure, the Internet Corporation for Assigned Names and Numbers (“ICANN”) sent a letter to the U.S. Federal Trade Commission (“FTC”) and Canada’s Office of Consumer Affairs (“OCA”) on Thursday, April 9, 2015.  ICANN has requested that the FTC and OCA assess the legality of the .SUCKS registry operator, Vox Populi Registry, Ltd.’s (“Vox”) purportedly ”predatory” premium pricing structure for brands.  


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By James Stewart

In 2011, the Internet Corporation for Assigned Names and Numbers (“ICANN”) made waves by approving the first adult entertainment industry-specific top-level domain (“TLD”), “.XXX,” administered by the ICM Registry.  At that time, many brand owners sought to protect their trademarks from cybersquatters on the .XXX registry by obtaining .XXX domain name registrations for one or more of their trademarks before the registry opened to the general public during the sunrise period. 

On December 6, 2014, ICANN delegated two new adult entertainment generic top-level domains (“gTLDs”) to the ICM Registry, “.ADULT” and “.PORN.” Brand owners who have registered their trademarks with the Trademark Clearinghouse (“TMCH”) will have the opportunity to block cybersquatters from registering their trademarks on the “.ADULT” and “.PORN” gTLDs during the sunrise period from March 2, 2015-April 1, 2015.  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 .ADULT and .PORN gTLD registries.  


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By: Ryan Compton & James Stewart

The modern era of general Top-Level Domains (gTLDs) is here.  The last several years of discussion, negotiation, public comment, lobbying, applications, and objections have finally led to delegation of the first new gTLDs in several years—the first handful in a sea of hundreds to thousands of new gTLDs—which will forever change the landscape of what Internet users put into the address bar of web browsers.   As previously reported, ICANN has begun delegating these new gTLDs, following entry into relevant registry agreements with the applicants for those gTLDs.  

Along with the delegation of the new gTLDs, these new registries will open to allow the registration of second-level domains by third parties.  Before opening to the public, each of the registries for the new gTLDs will open to trademark owners, registered with the Trademark Clearinghouse, for an initial Sunrise period—allowing trademark owners a first opportunity to secure second-level domains on the particular gTLD which incorporate their core marks. To that end, a number of Sunrise periods are currently open, or set to open within the coming weeks for the following gTLDs:

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*gTLD registries which are covered under the Donuts Domain Protected Marks List (DPML)


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By Ryan Compton & James Stewart

The imminent launch of more than 1,400 new generic top-level domains (gTLDs) poses a major challenge to brand owners seeking to enforce and maintain control over the way their key trademarks appear in domain names. The domain ender “.com” is the most widely used of the current gTLDs, but “.net,” “.org” and “.edu” gTLDs are also prevalent. All of the current gTLDs are managed by the Internet Corporation for Assigned Names and Numbers (ICANN). On June 20, 2011, ICANN approved a plan to expand the universe of gTLDs to include virtually any string of characters, including trademark words (e.g., “.docs,” “.rocks,” “.world,” “.pepsi,” etc.).

To help brand owners exercise greater control over use of their trademarks, ICANN has developed the Trademark Clearinghouse (TMCH), which gives brand owners the first opportunity to obtain domain names incorporating their trademarks upon the launch of a new gTLD. Brand owners registered with the TMCH will receive notice when a third party registers a domain name incorporating their trademark. The third-party registrant is also notified of the brand owner’s rights in the mark.


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By David M. Kramer

The Trademark Clearinghouse, one of the key rights protection mechanisms included in ICANN’s new gTLD program, will be launching on March 26, 2013.  As the name implies, the Trademark Clearinghouse is a centralized database containing trademark data submitted by brand owners.  It is critical that brand owners submit this trademark data prior to the launch of new gTLDs, which may occur as early as April 23, 2013.


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Intellectual Property and Technology Alert

Gina Durham

Over the past several months, the Internet Corporation for Assigned Names and Numbers (ICANN) has been accepting applications for the new generic top-level domain (gTLD) program.

This program allows organizations to own their own top-level domain extension and aims to greatly proliferate the number of available domain extensions beyond the limited number of extensions, such as “.com” and “.org,” to which Internet users are accustomed. With a few exceptions, an organization could have applied to have almost anything to the right of the dot, including its own company brand name or a generic term.

In a couple of weeks, the public will be able to review, for the first time, the list of gTLDs for which companies have applied. In advance of the official reveal date, a number of organizations are now announcing the subject of their applications. Google has announced that it applied for “.google,” “.docs,” “.youtube,” and “.lol.” The CUNA (Credit Union National Association) has announced that it applied for “.creditunion.”


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Reproduced with permission from Electronic Commerce & Law Report, 17 ELCR 714 (Apr. 18, 2012).

Copyright 2012 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com

By Amy E. Bivins

The Internet Corporation for Assigned Names and Numbers will not publicize who has applied for new generic top-level domain names until at least April 30, starting the clock on the public comment and objection processes, but legal disputes among rumored applicants are already beginning to surface.


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