• Act Now to Prevent Use of Your Trademark in Connection with New .XXX Adult Entertainment Domain Names
  • September 22, 2011 | Authors: Joseph M. DiCioccio; Geri L. Haight
  • Law Firms: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. - New York Office ; Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. - Boston Office
  • Domain names specifically intended for use by the adult entertainment industry are set to be launched in December 2011. Appropriately, these domain names will end in a new generic top level domain (gTLD), .XXX. Businesses that are not members of the adult entertainment industry can and should act now to prevent use of their trademarks in connection with .XXX domain names. Otherwise, in December, you may learn that the trademark used in connection with your best-selling product or service is being used in connection with an adult entertainment website.

    The time for trademark owners to act to prevent their marks from being used in connection with a .XXX domain name is now.

    Act Now: Opt Out

    Owners of registered trademarks may “opt out” of having those trademarks sold as part of the .XXX domain name offering. This procedure, called the “Sunrise B Period,” began on September 7, 2011 and ends on October 28, 2011. It runs concurrently with the “Sunrise A Period,” which permits businesses in the adult entertainment industry to register .XXX domain names that correspond to domain names from other gTLDs (such as .com, .net, etc.) or to such businesses’ trademark registrations.

    During the Sunrise B Period, owners of registered trademarks who are NOT in the adult entertainment business can block the relevant domain name corresponding to a particular trademark registration from being registered or used. Applications can be made through approved domain name registrars. The result of a successful Sunrise B application is that the domain name incorporating the trademark will be unavailable for registration, and the domain name will resolve to a standard informational page. On November 8, at the conclusion of the Sunrise A and B Periods, .XXX domain names that have not already been pre-registered by a member of the adult entertainment industry or blocked by a trademark owner during the Sunrise B Period will be made available to members of the adult entertainment industry on a first come, first served basis (the “Landrush” period). Thereafter, on December 6th, all remaining .XXX domain names will become available to the general public for registration (the “General Availability” period) in December 2011.

    Who Is Able to Opt Out and What May Be Blocked?

    Owners of a US trademark registration or a foreign equivalent may submit an application during the Sunrise B Period to remove a domain name comprised of the registered trademark from the .XXX domain name offering. Pending US trademark applications, US registrations on the supplemental register, common law or unregistered trademarks, and state trademark registrations do not meet the eligibility requirements for a Sunrise B application. Moreover, the registration forming the basis of the Sunrise B application must be valid as of September 1, 2011. You may only block a domain name that corresponds exactly with the trademark reflected in the registration.

    What Happens if Several Parties Seek to Register and/or Block the Same .XXX Domain Name?

    • If several Sunrise B parties (non-adult entertainment businesses) request that a particular domain name be blocked, it will be blocked and no registration fees will be refunded.

    • If several Sunrise A parties (adult entertainment businesses) request the same domain name, an auction will be held to determine who receives the domain name. The domain name will be awarded to the highest bidder.

    • If a Sunrise A party and a Sunrise B party request the same domain name, it will be given to the Sunrise A party, however:

      • The Sunrise A party will be given an opportunity to withdraw its application in light of the Sunrise B application;

      • Each applicant will be given notice of the other’s claim to trademark rights; and

      • If multiple applications remain, the domain name proceeds to auction and will be awarded to the highest bidder.

    • Only domain names registered during the Landrush and General Availability periods are awarded on a first come, first served basis. Sunrise applications are not awarded on this basis.

    Can You Apply to Block Registration of Typos of Your Trademark during the Sunrise B Phase?

    No. Sunrise B applications can only correspond exactly to the trademark as it appears in the trademark registration. Registration of domain names that are comprised of typographical errors of your trademark or that include generic or descriptive words in addition to your trademark may be registered once .XXX domain names become available to the general public during the General Availability period on December 6, 2011. Some registrars, like GoDaddy, are allowing pre-registration of such typosquatted .xxx domain names in advance of the General Availability period.

    It is important that trademark owners consider taking advantage of the Sunrise B Period. Failure to file a Sunrise B application may result in the trademark being registered as a domain name by a third party and used in connection with an adult entertainment website. Moreover, it is typically more expensive to reclaim domain names incorporating trademarks that have been registered by unauthorized third parties (e.g., through a Uniform Domain Name Resolution Policy proceeding or through a negotiated settlement) than it is to file a Sunrise B application.