Don’t Forget To Protect Your Brand In .sex gTLD Launch
Legal News & Analysis – Asia Pacific - Intellectual Property - Online Brand Protection
3 September, 2015
ICM Registry, the registry that brought us .xxx, .adult, and .porn, is about to launch the last of its four adult-themed gTLDs—.sex.
While many brand owners in the western hemisphere may be trying to sneak in a few last vacation days before the summer ends, before you leave town, CSC® recommends giving strong consideration to leveraging the Trademark Clearinghouse (TMCH) blocks that exist to secure matching registrations in the upcoming first-come, first-served Sunrise launch for .sex beginning September 1.
The launch of .sex is quite different than the launch of .xxx and many of the Donuts and Rightside gTLD launches that have flooded the Internet over the last 22 months. With .sex, brand owners cannot block their trademarks from being registered. Anyone can register a brand string or famous name once we get to General Availability,” says Gretchen Olive, CSC director of Policy and Industry Affairs.
That means that anyone interested in capturing web traffic by exploiting the goodwill of a brand can do so—at least until they’re caught—and brand owners will have to spend budget to seek redress through cease and desist letters or URS or UDRP actions.
“The .sex launch is one that should be top-of-mind for brand owners, celebrities, and other well-known personalities. According to Google Analytics, the word ‘sex’ is searched globally around 37 million times a month, so the pairing of a brand, product, or famous name with .sex will likely drive significant web traffic to unauthorized and potentially pornographic web sites if brand owners, celebrities, and other well-known personalities don’t take a proactive approach to this launch,” says Gretchen.
If a brand owner doesn’t currently have a validated TMCH that matches the string(s) they are interested in protecting, there are two other ways to secure registration prior to General Availability. First, it is not too late to file for a TMCH for active trademarks of national effect and participate in the Sunrise phase. TMCH filings can typically be turned around in less than a week. Secondly, brand owners can wait for the second launch phase, called Limited Registration, and utilize exactly matching .xxx blocks or an exactly matching .xxx active registration that meets the date requirements (more below) to qualify for registration.
“This second method of securing a .sex registration prior to General Availability enables brand owners to leverage the money they’ve already invested in .xxx blocks to secure registrations of key brands before the registry opens registration to the general public. However, if the string you are interested in securing is not unique, you may be too late. It’s always best to do what you can to register in the earliest launch phase in which you’re eligible to minimize risk,” cautions Gretchen.
For more information, or for order deadlines for the .sex launch, please contact your CSC strategic account manager or client service partner.