• Protecting Trademarks in the New .XXX Domain Name Release
  • May 16, 2011
  • Law Firm: Barnes Thornburg LLP - Indianapolis Office
  • The Internet Corporation for Assigned Names and Numbers (ICANN) is set to release the new .xxx top level domain intended for use by the adult entertainment industry later this year. As with all top level domains (i.e. .com, .net. .org, .us, etc.), brand owners must be vigilant in protecting their trademarks as there is no doubt that cybersquatters and other opportunists will do their best to take advantage of this new domain name release at the expense of trademark owners.

    To prevent the registration of .xxx domains that correspond with your company’s trademarks, there will be a pre-launch “sunrise” period exclusively for trademark owners not in the adult entertainment industry. During this sunrise period, trademark owners will have the ability to secure and block specific .xxx domain names from being acquired by others. This sunrise period will likely last for approximately 30 days, during which time trademark owners can pay a one-time fee to block their trademarks from being registered as .xxx domains by others. Once registered, Internet users attempting to access YourTrademark.xxx will encounter a static webpage that indicates that the domain was acquired as part of the Intellectual Property Protection program. The fees for securing a .xxx domain name have not yet been set, but will likely be around $50-$75 per domain.

    Although trademark owners must wait until the sunrise period to secure and block .xxx domains, the .xxx registry is encouraging trademark owners to “pre-register” their desired .xxx domains at http://domains.icmregistry.com/index.html. There is no cost for pre-registering .xxx domains and pre-registration will help ensure that trademark owners will be provided with information for participating in the sunrise period.

    Proactively seeking registration of YourTrademark.xxx domains during the sunrise period is the best strategy for protecting trademarks in the .xxx domain space. Although reactive measures will be available for addressing abusive domain registrations, these measures will be more expensive and forcing transfer of YourTrademark.xxx once it has been registered by someone else will not always be possible.