Beware: .XXX Adult Community Domain Registration Opens September 7, 2011

But You Can Register to Block Use of Your Trademarks as .XXX Domain Names

Late last year, the Internet Corporation for Assigned Names and Numbers (ICANN) – the international agency tasked with administration of domain names on the Internet – announced the planned launch of a new top-level domain (TLD) for the adult industry: the .XXX TLD. The launch of the .XXX TLD starts on September 7, 2011.

ICM Registry (www.icmregistry.com) is the entity operating the .XXX TLD. The .XXX TLD is intended for use by the adult entertainment industry, the goal being voluntary and better-regulated online sites with adult content.

To qualify for “Sunrise B” – the .XXX domain name registration period for non-adult brand trademark owners who desire to block their trademarks from registration as .xxx domain names – an applicant must own a valid U.S. or international trademark registration as of September 1, 2011.

The Sunrise period will last from September 7, 2011 through October 28, 2011. Following conclusion of the Sunrise period, a “Landrush” registration period will open for adult brand owners who did not qualify for Sunrise A. The .XXX TLD will then open for general registration on December 6, 2011. Non-adult brand owners who did not qualify for Sunrise B will also be able to apply for blocking or non-resolving .XXX domain names.

Why should I be worried?

If a non-adult brand is registered as a .XXX domain name, it may create an unwanted association with the adult entertainment industry. If your brands have no relationship to the adult entertainment industry, you may want apply to block registration of your trademarks as .XXX domains to prevent them from being associated with adult entertainment.

Do I have to apply to block .XXX registration of my trademark during Sunrise B?

While blocking of .XXX domains for your trademarks is not required, as a trademark owner, you should consider such preventive measures during Sunrise B if you are concerned about the potential for your brand to be associated with the adult entertainment industry. A .XXX domain registration can be challenged through ICANN’s Uniform Dispute Resolution Policy (UDRP) or through ICM Registry’s Rapid Evaluation Service (RES) and the Charter Eligibility Dispute Resolution Policy (CEDRP). However, such dispute proceedings can be costly. Blocking a .XXX registration from the outset would be less costly than challenging a .XXX domain registration later.

What happens if I successfully apply to block use of my trademark as a .XXX domain name?

Successful Sunrise B applications will result in reservation of the “brand.XXX” from general registration. The corresponding domain name will resolve to an informational page indicating that the domain is not available. The use of the informational page structure is intended to prevent domain hijacking. A successfully blocked .XXX domain will currently last for the length of ICM Registry’s contract with ICANN, which is 10 years.

Does applying to block use of my mark guarantee that it will be blocked?

If competing Sunrise A and Sunrise B applications are filed for the same “trademark.XXX” domain, priority will be given to the qualified Sunrise A applicant and the Sunrise A applicant will be notified of the Sunrise B applicant’s interest, preventing the Sunrise A applicant from claiming a lack of notice in any resulting dispute over the domain name. Non-adult brand trademark owners will be able to challenge registered .XXX domains through ICANN’s Uniform Dispute Resolution Policy (UDRP) or through ICM Registry’s Rapid Evaluation Service (RES) and the Charter Eligibility Dispute Resolution Policy (CEDRP).

How do I apply to block use of my mark in a .XXX domain?

ICM Registry will begin accepting Sunrise B applications through approved registrars starting on September 7, 2011 and ending on October 28, 2011. The list of approved registrars for the .XXX TLD can be found at http://www.icmregistry.com/registrars/. Some registrars are accepting pre-orders.

What will it cost to block use of my mark in a .XXX domain?

The cost will vary depending on the registrar service that is used. Registrar Sunrise B fees range from $199 to $500 per mark and include various levels of services.

Where can I get more information?

Holland & Knight can provide assistance with the requirements for and filing of Sunrise B applications. We can also provide you with the fees charged by various registrars and assist you in making the required filings.