Tim Lince

After a record-breaking double sunrise period for its ‘.adult’ and ‘.porn’ gTLD strings, ICM Registry has announced it is expanding its programme for trademark owners by allowing sunrise B applicants access to its domain matching programme. The move comes at a time when, according to ICM Registry’s legal counsel, trademark counsel are clearly suffering from “domain fatigue”.

ICM Registry launched its first sunrise period, ‘sunrise A’, for brands registered at the Trademark Clearinghouse (TMCH), before opening ‘sunrise B’, for trademark owners who registered in ICM Registry’s 2011 launch of ‘.xxx’, allowing matching domain names to be secured in the ‘.adult’ and ‘.porn’ strings. While sunrise B ended last Friday, both ‘.xxx’ sunrise B reservants and ‘.xxx’ domain holders now have until May 30 to acquire matching names.

In terms of the headline figures, ICM Registry has announced that around 4,000 registrations were filed in the two sunrise periods – the previous best new gTLD sunrise period (‘.london’) only garnered around 750 registrations, so this has proven the most popular sunrise period of the gTLD rollout so far.

Talking to World Trademark Review at INTA’s Annual Meeting in San Diego, ICM Registry’s general counsel Sheri Falco revealed that both sunrise periods were “equally successful”, garnering around 2,000 registrations each (the number for sunrise B is set to grow, of course, thanks to the month-long extension). She added that a number of industry sectors had shown “significant activity” in the two sunrise periods, specifically pointing out technology companies, banking, fashion, sporting franchises and (as already reported) celebrities (including Taylor Swift, Beyoncé, One Direction, Paris Hilton, Miley Cyrus and Richard Branson).

However, research by WTR (shown below) reveals that a number of major brands have yet to register their ‘.adult’ and ‘.porn’ domains in the two sunrise periods and, although most are currently temporarily reserved, they will become available to anyone when both strings hit general availability on June 4 should they remain unsecured. Brands that have yet to register include Disney, Coca-Cola, Shell, Verizon and Toyota. The research does reveal, however, that more than 50% of the brands we studied (most from the Brand Finance list of most valuable brands) are registered, reflecting the strong numbers of both sunrise periods. The research also shows that all but one of the brands registered in both strings, with only German supermarket brand Aldi choosing to register in just ‘.adult’.

With ICM’s fourth TLD, ‘.sex’, launching in September, Falco acknowledges that trademark owners are being deluged with new gTLDs for consideration, explaining: “Trademark owners and domain name owners are really suffering from ‘domain fatigue’. There are just too many TLDs out there to figure out how, when and where to buy names of interest – it is confusing and frustrating for many brand managers. ICANN had such a lofty ambition, this whole concept of so many new gTLDs, and when you come up with such a big idea, a lot of times the details get lost in the original creation. When they launched the gTLD program, for example, it was before the whole rights protection of the TMCH was even finalised. ICANN deals with policy and wanted to ensure policy pillars were in place, but doesn’t deal so much with actual implementation. So there are certainly opportunities for improvement – for example figuring out how to integrate the TMCH so it is a more seamless process for trademark owners. I hope that is implemented in the next gTLD round. If the goal is to create a competitive environment through a transparent free market economy, then you want to get the domain names in the right hands at the right times.”

Illustrating the challenge of reaching brand owners, Falco notes that many domain registrars are not taking part in trademark sunrise periods because of the complexity involved in setting them up. She revealed that, out of the 90 registrars who sold ‘.xxx’ names, only 30 are selling ‘.porn’ and ‘.adult’ names: “It has been difficult to reach our stakeholders, which includes trademark holders, because many registrars, whose role it is to serve as the retail providers of these domain names, are operationally overwhelmed with the vast amount of new gTLDs launching. The result is that many registrars don’t have the time to reach out to mark owners and educate them. Some registrars have been exceptional in collaborating with us on behalf of their customers; they’ve been active participants in our educational outreach programs and have engaged in their own directed educational programs and communications as well. But others have opted not to participate in our sunrise programs.”

This May 30 deadline does offer counsel suffering from gTLD tiredness more time to consider securing their domains in the adult strings. Ultimately, though, the onus is on mark owners to fight through the fatigue because there’s still a long way to go.


See below for our research into brand names who have registered ICM Registry strings (click here for full-size). Those marked as ‘sunrise B Temporarily Reserved’ will become available when the strings hit general availability on June 4 unless registered by the brand owner in May. The '.adult' and '.'porn' brand domains marked as 'available to buy' will also become available to buy on June 4.

(research conducted on May 4)


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