- Avoiding the Internet's Red Light District
- October 27, 2011
- Law Firm: McCarter English LLP - Newark Office
Soon there will be a virtual red light district on the Internet catering to the adult entertainment industry. This dark corner of the online world will be populated by websites offering a broad spectrum of content intended for voyeurs. Just as you would steer clear of such a place in the physical world when locating your business, the same holds true for your company's online presence.
Within a matter of months, new generic top level domain (gTLD) .xxx will be a reality. Like other gTLD's (such as .com, .net and .org), individuals soon will be able to register .xxx domain names, and use such domain names for the online addresses of websites.
Understandably, the large majority of brand owners outside the adult entertainment industry have no desire to see their valuable trademarks associated with pornography. However, just as online infringers have been prolific in securing unauthorized registrations of .com. .net and .org domain names incorporating trademarks of others, so to will these bottom feeders be tripping over each other to usurp the goodwill associated with lucrative brands by registering .xxx domain names incorporating the associated trademarks.
Protect Your Brand Against .xxx Domain Name Registration
The .xxx registry has enacted a limited window of opportunity, known as the "Sunrise B" period, during which trademark owners who are not in the adult entertainment industry will be able to file applications to block third parties from registering .xxx domain names incorporating their trademarks. The Sunrise B period expires on October 28, 2011.
A successful Sunrise B application does not yield a .xxx domain name registration that can be used as an Internet website address; instead, it affords a trademark owner a ten-year block on the registration of a .xxx domain name incorporating a particular trademark. Moreover, rather than have the blocked .xxx domain name link to the trademark owner's website, it will link to a generic informational page indicating that the .xxx domain name as unavailable. In this manner, a trademark owner can prevent a company trademark from being available for .xxx registration by members of the general public in later stages of the .xxx registration process.
Eligibility for Sunrise B .xxx Domain Name Blocking
In order to be eligible to file a Sunrise B application, you must be the owner of a U.S. federal or foreign trademark registered before September 1, 2011. Pending U.S. trademark applications, U.S. registrations on the supplemental register, common law or unregistered trademarks, and state trademark applications do not meet the Sunrise B eligibility requirement. Furthermore, the blocked .xxx domain name applied for must precisely mirror the trademark registration. No Sunrise B blocking is allowed for .xxx domain names that contain words or characters not part of the trademark registration or are misspellings of the trademark registration. Nonetheless, these and other variants of registered trademarks may be protectible by a trademark owner later in the .xxx registration process, or through other legal means.