General registration has begun for websites including the generic top level domains (gTLDs) .sex, .porn, .XXX, and .adult, thus allowing the public to purchase domain names ending with these extensions. Registration is on a first come, first serve basis and does not require pre-ownership or proof of a trademark registration to be granted the domain name. This presents the risk that third parties may register domain names in these new gTLDs for trademarks they do not own and potentially use the domain names for derogatory purposes.

If a trademark is registered in a domain name in an undesired gTLD to a party that is not the owner of the trademark, the actual trademark owner could sue the domain name holder and ask the judge to award them control and ownership of the domain name. However, this could be a costly and time consuming process. Instead of waiting for a third party to register a domain name with a trademark in an undesired gTLD, a trademark owner may proactively register for a domain name containing their trademark in that gTLD to prevent other parties from registering and using it for disparaging purposes. Actual use of the domain name is not required to maintain ownership and this approach may provide a cheaper alternative filing a lawsuit against a third party owner.

If you have any questions regarding the registration for new generic top level domains or wish to protect your brand from being registered in these domains by a third party, please contact the attorneys at Woodard, Emhardt, Moriarty, McNett and Henry LLP.