Sex, Sales and Video: The Latest gTLD Sunrise Periods

There are several open gTLD Sunrise Periods that may be of interest to companies in the advertising, entertainment, fashion and retail, and sports industries who wish to prevent registration of their trademark as a domain name in the new adult-related gTLDs. These same companies also may be interested in the Sunrise Periods for the .sale and .video gTLDs. As we previously reported, each new gTLD operator must provide a window during which only owners of brands registered with the Trademark Clearinghouse may purchase domain names reflecting their registered marks before offering second level domains to the general public. ICANN is announcing the new sunrise periods in rounds as new gTLDs are delegated. As explained in our previous advisory, you must register your company’s marks in order to participate in the sunrise periods for new gTLDs.

Registration for .ADULT and .PORN will occur in phases.

During the first phase, the TMCH Sunrise period, brands that have registered their trademarks with the Trademark Clearinghouse may register domain names that are identical to their registered marks.

During the second phase, the Sunrise B period, those who previously reserved domain names ending in .XXX may register matching domains under .ADULT and/or .PORN. In order to qualify to register during the Sunrise B phase, a brand must have registered its marks for .XXX in 2011. In 2011, a trademark owner that is not active in the adult entertainment industry was permitted to ​“opt out” of an .XXX domain by ​“registering” domains reflecting its brand to block substantive content from appearing on the domain for at least 10 years. The domains redirect to a standard information page indicating that the domain is blocked. During the upcoming Sunrise B period for .ADULT and .PORN, brands that previously blocked content from .XXX domains may register identical domains to the same effect.

Note that if a brand has a trademark registered in the Trademark Clearinghouse and also successfully applied for a .XXX blocking domain in 2011, it may register matching strings for .ADULT and .PORN under either the TMCH Sunrise Phase or the .XXX Sunrise B Phase.

During the third and final phase, the Domain Matching phase, all other existing .XXX registrants may register matching .ADULT and .PORN strings. Those that wish to register .ADULT and .PORN during this phase must register the identical .XXX domain by April 30, 2015 in order to participate.

The following open gTLDs Sunrise Periods may also be of interest for brand owners who wish to register domains reflecting their trademarks. These gTLDs use an End Date Sunrise system, in which any competing applications will be resolved by auction at the close of the sunrise period, rather than a first come, first-served basis.

Click here for a link to view all sunrise claim periods for recently delegated gTLDs.

For more information about the new gTLD program, please contact:

Andrea L. Calvaruso
(212) 808-7853
acalvaruso@​kelleydrye.​com

Kelley Drye represents and advises clients in all aspects of trademark and copyright practice including trademark counseling, prosecution and filings; design and trade dress protection; copyright acquisitions, registrations, protection, confidentiality agreements and enforcements; licensing, distribution and corporate transactions; internet challenges including new gTLDs and ICANN domain disputes; anti-counterfeiting and grey goods; as well as strategies and policing.  Kelley Drye’s Trademark and Copyright practice was recognized as a leading practice by Chambers USA 2014, which noted that our lawyers ​“never fail to produce high-value and innovative work.”