September 02, 2015

.SEX Top Level Domains Now Available – But Why?

by Guest Blogger


On October 5, 2015, ICANN opens the door for trademark owners to register their marks in connection with the new .SEX top-level domain. This is called a "sunrise" period and permits domain name registrations before the top-level domain goes active.

Why would anyone want to register their trademark in connection with the .SEX top level domain? That is a good question. There is the obvious reason, namely that a trademark owner wants to use its trademark in connection with .SEX because it believes that consumers or potential consumers of the goods or services offered in connection with its mark would be attracted to a web page domain that includes its trademark followed by .SEX.

Then there is the more frequently cited reason of "defensive registration." This suggests that many legitimate businesses hope to prevent third-parties from registering the trademark owners' marks, and are therefore willing to spend the time and money to register the marks in the .SEX directory in an effort to prevent harms to their commercial reputation.

Domain names are not the equivalent of trademark rights. There are going to be many instances in which a third-party may register a trademark as part of a domain without the trademark owner's consent. This was the subject of a previous blog post here, hence the general concern for defensive registrations. Defensive registrations are also seen in connection with domains, which have popped-up as venues for third-party gripe sites directed to trademark owners' goods or services. Assuming the criticism posted there are not factually false, "sucks" URLs are very difficult to combat given the protections of free speech afforded by the First Amendment.

I for one question whether any defenses registration of .SEX domains is valuable or necessary for most brands. With some exceptions, consumers are not going to stumble upon a trademark.SEX site believing that it is a legitimate commercial source of non sex-related goods or services. My impression is that .SEX makes it easier for consumers (and mothers) to avoid or block the sites in which they have no interest. Why did ICANN even open a .SEX top-level domain for registrations? Follow the money.

The way in which disputes over .SEX domain registration will play out remains to be seen. For example, will there be an automatic tarnishment/disparagement connected to the use of a (famous) trademark with .SEX?

If you registered your trademark with ICANN's designated Trademark Clearinghouse you have first come first serve access to register in .SEX. If you have not, there is still an opportunity to register your mark in connection with .SEX.