Firm Profile
Our Lawyers
Areas of Practice
LegalShield
Firm News & Blog
Contact
(416) 863-0125

COVID-19 Update — Out of an abundance of caution, and to assist in our community’s collective effort to combat COVID-19, our physical offices are closed on a temporary basis. We remain otherwise fully operational and look forward to continuing to provide the highest level of legal services to our clients. Click here to learn more.

Effective branding can be essential to business success, but protecting one’s brand can be a difficult task. The recent launch of three arguably scandalous domain name extensions provides yet another brand protection challenge for business owners. As of March 30, 2015 businesses and individuals alike have the opportunity to register or buy a domain name with the extension .sucks, .porn, or .adult.

The registration for each of these extensions follows a similar launch structure: first, the domain names are available for purchase by a restricted group of users at a higher cost. Sometime after this initial registration period, the domain names will become available for purchase at approximately 1/10th of the cost.

So, how does a business prevent its name, product, trademarks and copyrights from being affiliated with “sucks”, “porn” and “adult” related content? The short answer is strategic brand protection.

Strategic brand protection in this context can be accomplished in a few different ways. First, and perhaps most obviously, a company can purchase a .sucks, .porn, or .adult domain name. Such a purchase can be made during the initial registration phase by Applicants who have recorded their trademarks with the Trademark Clearinghouse. If a company or individual is unable to or chooses not to purchase a domain name during this period, they can do so at a substantially reduced cost during the second phase of registration.

The second, and more risky option, is to purchase a domain name blocking service. This service is available for purchase during the second phase of registration. Essentially this service removes key trademarks and copyrights from the pool of domain names available for purchase. However, if the domain name happens to have been purchased during the first phase, it will not be available for purchase through the blocking service.

Of course, businesses and individuals will have different incentives and concerns about the purchase of these new domain names. At the end of the day, it’s important to turn one’s mind to potential harm that could arise from an affiliation between a business and .sucks, .porn or .adult – intentional or not. If the harm is substantial enough, it’s worthwhile to investigate the most effective method of strategic brand protection.

Contact Us

2 St Clair Ave West
Suite 2101
Toronto, ON M4V 1L5
Canada

Phone: (416) 863-0125

Fax: (416) 863-3997

Questions? Send us an email.

Sending an e-mail to us will not make us your lawyers. You will not be considered a client of Mills & Mills LLP until we have agreed to act for you in accordance with our usual policies for accepting clients. No information we provide to you can be treated by you as legal advice, unless and until we have agreed to act for you. Confidential or time-sensitive information should not be sent through this form.