publication date: Oct 10, 2011
author/source: Colin Thurston
The number of Internet domains is set to multiply by the end
of next year. And not all the new
domains are ones that a charity's board would want associated with their institution.
Organizations and brand owners are generally advised to secure any Internet
domain names related to their brand that they would not want anyone else to
register, since it can be costly and time-consuming to obtain the right to a
domain name after it has been registered by another party.
Two recent developments regarding top-level Internet domain
names will be of interest to brand owners.
First, on June 20, 2011, the Internet Corporation for Assigned Names and Numbers
announced its plan to increase the number of generic top-level domains ("gTLDs")
from the current 22, which includes such domains as .com, .org and .net.
It is expected that a wide range of diverse domains will
result from a new program that will allow prospective registry operators to
apply for the creation of new gTLDs beginning on January 12, 2012. The new
gTLDs are expected to become operational as soon as late 2012.
Brand owners should monitor this development as new
information becomes available and be prepared to secure any new domain names
that they would not want a third party to register. More information regarding
the new gTLDs can be found online at http://newgtlds.icann.org/
Avoid adult entertainment
Second, the new sponsored top-level domain name ".xxx" will
be launching in late 2011 for members of the adult entertainment industry. This
is of interest because ICM Registry
the registry for the new .xxx domain, is allowing registered trade-mark owners
to block their trade-marks from being registered as .xxx domain names by third
parties, even before those domains become available for registration by the
A benefit of this "blocking" process is that the trade-mark
owner pays only a one-time blocking fee and would not have to actually register
the domain name. Further, a party who
blocks a domain will not appear as the domain's registered owner in a WHOIS
search. The application period to block .xxx domain names is open to owners of
registered Canadian or international trade-marks from September 7, 2011 until
October 28, 2011.
This process may be of interest to many charities and
nonprofits, but particularly to religious charities and those which focus on
services for women. It provides a means by which they may protect certain .xxx
domain names without publicly associating their organization with the domain.
Organizations wishing to protect a brand for which they do
not hold registered trade-marks may register .xxx domain names when they are
made available to the general public after December 6, 2011. But such a
registration would result in annual renewal fees to maintain the registration,
as well as the organization possibly being publicly listed as the domain owner.
become extortion victims
If a .xxx domain name is not registered or blocked by an
organization, then there is the possibility that the domain name might be
registered and used as a domain for an adult website by a third party. That may
result in significant bad publicity for some organizations, particularly
religious organizations or charities which focus on providing services to
While it may seem unlikely that someone would want to use www.[yourcharity].xxx for their
pornographic website, charity and nonprofit brand owners should be aware of the
possibility that they could be targeted by a bad faith registrant, who may
intentionally register their trade-mark or domain name as a .xxx domain for
Indeed, there have been instances in which reputable
organizations' expired domain names have been redirected to pornographic
websites by a malicious registrant who would later offer to sell the domain
name back to the organization at an exorbitant price. The launch of the new
.xxx domain is ripe with similar opportunities for would-be domain hijackers,
and in this regard charities and not-for-profits should be proactive in
protecting their trade-marks and domain names.
How to protect your
Applications to block or register a .xxx domain name must be
submitted through an accredited registrar. A list of accredited registrars is
available on the ICANN website at http://www.icann.org/en/registrars/accredited-list.html
The process of disputing a domain name after it has
been registered by a third party is costly and time-consuming. By comparison, blocking or registering a .xxx
domain name beforehand is simple and affordable for most organizations. For
this reason, charities and not-for-profit brand owners would be well advised to
take advantage of this unique opportunity.
More information is available on the ICM Registry's website at http://www.icmregistry.com/
Colin Thurston is a student-at-law with Carters Professional Corporation. Contact him at 519-942-0001 x232, 877-542-0300, or by email