|August 31, 2011|
Previously published on August 24, 2011
No doubt you are very familiar with the traditional “.com,” “.net” and “.org” domains, but you’ll soon be seeing an entirely new class of websites ending in “.xxx.” As you can likely guess, these new domains will be used by parties in the adult entertainment industry. Those outside that industry have understandably expressed concerns that third parties could register and establish .xxx websites that incorporate their legitimate business names, trade names and trademarks. Fortunately, there is a limited period of time available during which owners of registered trademarks will be able to effectively “block” their marks from the pool of available .xxx domains.
The .xxx Top-Level Domain
Earlier this year, the Internet Corporation for Assigned Names and Numbers (ICANN) approved the .xxx top-level domain (TLD), which is intended for use by those in the adult entertainment industry. Due to the concerns of trademark owners that their marks could be associated with new .xxx domains and websites, the company behind the TLD, ICM Registry, has instituted a limited-time procedure allowing owners of registered trademarks to “opt-out” of .xxx, and block any third parties from registering .xxx domain names that are comprised of the owners’ registered marks.
Opt-Out “Blocking” of .xxx Domains for Trademark Owners
For owners of registered trademarks who are not involved with the adult entertainment industry, the ICM Registry has established a straightforward initial opt-out period referred to as “Sunrise B.” If an application to reserve a .xxx domain name is submitted during the Sunrise B period and approved, that name will be effectively removed from the pool of domain names available to others. Any attempts to access this particular .xxx domain will direct users to a standard informational page displaying a notice stating that the domain is not available for registration. Moreover, trademark owners who successfully opt out will not be identified as having registered a .xxx domain. Instead, the name “ICM Registry” will appear as the registrant, providing a degree of anonymity in the registry to those who have opted out.
In order to reserve a .xxx domain name under Sunrise B, a trademark owner must own a valid federal or other national trademark registration, and the registration must have been issued prior to September 1, 2011.
The Sunrise B period commences on September 7, 2011, and lasts for 52 days, until October 28, 2011. It is only possible to block a .xxx domain name during this period. After the Sunrise period ends on October 28, 2011, trademark owners may still obtain defensive .xxx TLD registrations — that is, by preemptively registering their “trademark.xxx” domains. But they must do so on a first-come, first-serve basis after ICM Registry’s general availability “land-rush” phase begins on December 6, 2011.
Procedure for Blocking a .xxx Domain Name
In order to reserve a .xxx domain name, a Reservation Request must be submitted to ICM Registry, which request shall set forth the domain sought and information about the registered mark, including the registration number, registration date, class/es identified in the registration, country of registration, etc. A more detailed description of the Reservation Request contents can be found at ICM Registry’s website, located at http://www.icmregistry.com.
Cost and Duration of Protection
The one-time fee to block a mark from the .xxx TLD during the Sunrise B period is $225 per registered mark, exclusive of legal fees. Once approved, a reservation made under Sunrise B is permanent, with no additional fees required to maintain the registration. Any defensive .xxx TLD registrations submitted after the Sunrise B period during the general availability phase, however, will be subject to periodic renewal fees.
Of course, the rules established by the ICM Registry for the .xxx TLD are very detailed, and this Alert provides only a general overview of certain critical procedures and deadlines of interest to trademark owners.