• New .XXX Domain Can Lead to Headaches
  • September 5, 2011 | Author: Michael "Mike" D. Hobbs
  • Law Firm: Troutman Sanders LLP - Atlanta Office
  • Turning the old expression on its head, the new top level domain name for sexually-oriented web sites may lead to headaches for trademark owners. Earlier this year, the .xxx top-level domain was approved for use. These top-level domains will be available to entities that provide online, sexually-oriented adult entertainment and related services. 

    Even companies that do not provide applicable services should be aware of the issues posed by the launch of the new .xxx top-level domain.

    A chief concern would be whether an adult entertainment provider could register and maintain a domain name containing one of your trademarks, thus bringing embarrassment or unwanted attention. For example, imagine the embarrassment to Nike of a sexually explicit web site with the nike.xxx or justdoit.xxx domain name. 

    If a third party acquires a domain name containing one of your trademarks, you could file a suit or action to have this domain name transferred to you. While this may yield a good result, it would take time and resources.

    Fortunately, there is a less expensive solution to prevent this situation. ICANN, the administrator of the .xxx domain names, has instituted a system in which trademark owners who are not adult entertainment providers can register to block the registration of domain names comprising their marks. Registrants do not ever have to use the blocked address.

    The “sunrise” period for this registry opens on September 7, 2011, and closes October 27, 2011.