Posted on July 13, 2011 by David Silverman

Protect Your Call Signs and Other Marks in the .xxx Domain

ICANN (the Internet Corporation for Assigned Names and Numbers) has approved the use of .xxx as a domain (like .com) for the adult entertainment industry. In September, broadcasters and others with registered marks will have an opportunity to reserve their marks defensively in the .xxx domain.   

While adult-oriented website operators may be interested in reserving spots in the .xxx top level domain (TLD), broadcasters may be just as eager to prevent their call signs and other marks from being used in that TLD where they may be associated with adult content. The ICM Registry, which will operate the .xxx domain, will allow those who own registered trademarks to reserve .xxx domain names to prevent others from using their marks in that domain.

 Beginning September 7, 2011, there will be a 30-day “Sunrise” period during which adult-oriented website operators will be able to register their marks and domain names in the .xxx TLD. Simultaneously, non-adult-oriented trademark owners can file to block use of their call signs and other marks in that domain, so long as those marks are nationally registered in the United States or any other country.  Registered marks could include call signs, slogans or company names.  For example, Google could secure a domain reservation for google.xxx to prevent an adult-oriented company from actively using that domain name. In registering defensively,  broadcasters would not gain use of the .xxx website, but rather would go a long way toward ensuring that no one else can use it for an adult-oriented website. Broadcasters will not be able to prevent use of unregistered marks or call signs, misspellings of registered marks, or mere domain names during the Sunrise period.

It will be extremely beneficial for broadcasters and others to reserve their registered marks during the Sunrise period if they do not want to see those marks used as domain names in the .xxx TLD for an adult-oriented website. This is especially true since the next registration period, the so-called “Landrush” period beginning Oct. 24, 2011, will allow adult-oriented services to apply for any .xxx domain names unclaimed during the Sunrise period. During the Landrush period, there will be no simultaneous opportunity for broadcasters or others to defensively block use of their call signs or other marks in the .xxx TLD.

Owners of unregistered marks or call signs, as well as those who simply miss the Sunrise period will still be able to take advantage of various dispute resolution measures such as the Uniform Domain Name Dispute Resolution Policy (UDRP) to recover domain names registered in the .xxx domain. Owning a prior registered or common law mark could well be grounds for recovery of a similar .xxx domain name in a UDRP proceeding, but UDRP proceedings can be expensive to prosecute. By contrast, the simple reservation of registered marks during the Sunrise period beginning in September—the cost of which is estimated at between $200 and $500 per domain name—could avoid needless cost and effort later on.

Additional details can be found in our Client Advisory on this subject.
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Posted on March 18, 2010 by David Silverman

New .co Top Level Domain to be Made Available

The .co top level domain (TLD) is being opened to the general public, and one can envision a run on registrations similar to that experienced for .com.  It is easy to see why the Colombia country code, formerly available in that country only, may become very popular in the US and elsewhere.  For one thing, .co is the standard abbreviation for "company."   It is also a very common misspelling of .com.  It has been estimated that google.co gets 15,000 hits per day by mistake.   From April 26 until June 10, a window will open in which only registered trademark owners will be able to register their marks in the .co TLD.  Beginning in July, however, .co will be opened to the general public.  We suggest that any companies with registered marks protect those marks in the .co TLD in April, and those that do not should register their call signs, company names or nicknames as soon as possible in July.  If someone else registers your call sign or company name in the .co TLD before you do, it could be very difficult and costly to recover it.

It is difficult to believe that the first .com domain name was registered just 25 years ago this week.  By the end of 1985, only five .com domain names had been registered.   Ten years later there were 120,000 .com domain names.  Now, there are nearly 85 million registered .com domain names.  Beginning sometime next year (2011), ICANN (the Internet Corporation for Assigned Names and Numbers) is expected to allow companies to buy their own TLDs (meaning that your company name could follow the "dot" in a URL), although the cost is expected to be close to $200,000 per TLD.  However, Canon has already announced that it intends to apply for .canon, and it is expected that other large companies will follow suit.

In the meantime, do not let a cybersquatter register your company's name or call sign in the .co TLD before you do.  Register your name, and also allow this process to remind you to file trademark applications for product or service names important to your business.  Let us know if you have any questions about the domain name registration process.
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Posted on November 25, 2008 by David Silverman

".tel" Domain Name To Become Available Soon

There's a new top-level domain name ("TLD") on the block, and broadcasters and other media companies will want to protect URLs that include their call signs, unique slogans and positioning statements or other registered marks or names.  The new TLD will be ".tel."  Unlike .com, .net, .org, and other current TLDs that link to websites, the new .tel TLD is designed specifically for access by mobile devices such as the Blackberry and iPhone and will access to the contact information of the holder of the .tel URL without the need for a standard website.  The theory behind the .tel TLD is to allow instant access to contact information without having to access a registrant's website.  When contact information is accessed via mobile devices, the telephone numbers will appear as "hot links" that will dial those numbers upon touch or selection.  Of course, links to websites may also be provided, but the primary purpose of the TLD is to provide a global contact directory without the need for the user to have Outlook or other address books or for the registrant to have a website.

Beginning December 3, 2008, anyone with a registered trademark or service mark can register a .tel domain name using that mark for a cost estimated to be in the $500 range.  This so-called "sunrise" period will last for two months.  Beginning February 3, 2009, there will be a so-called "landrush" period allowing anyone to register any unregistered .tel domain names, including generic or descriptive marks or names, such as radio.tel or cable.tel, on a first-come, first-served basis.  (Bad faith use of a third party's trademark will be subject to cancellation under existing domain name dispute procedures.)  The "landrush" period will last until March 23, 2009, after which the .tel TLD will be generally available to anyone at a much reduced fee, currently estimated to be as low as $1.25 per month.

The .tel TLD will be available from many of the same registrars that provide registration of .com and other existing TLDs.  It will be open to both businesses and individuals, and will allow for the option to make contact info privately available.  There is a growing sense that .tel names will be in great demand and that it may pay to protect your intellectual property by registering it in a .tel domain name before someone else beats you to it.  Look into this prospect now!
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