Clock Ticking for Trademark Registrants Seeking to Block Registration of Their Marks on .XXX Domain

As has been widely reported by the mainstream press and most legal publications, the Internet Corporation for Assigned Names and Numbers (ICANN) has approved a new “.XXX” top-level domain expected to be utilized by the adult entertainment industry. Given the connotation of the .XXX domain, companies and individuals around the globe are considering how best to protect their trademarks from the potential harms of registry misuse, including cyber squatters targeting this new domain to register well known trademarks. Although the creation of the .XXX domain will be a boon to those in the adult entertainment industry and domain registrars, it raises serious threats of infringement, brand dilution or tarnishing for trademarks uninvolved in those industries. If they have not already, all trademark owners should be considering the potential impact of the .XXX domain to their marks and determining whether to take the necessary steps to “opt-out” of .XXX domain registration by the October 28, 2011 deadline for doing so.

ICM Registry LLC (“ICM”), the company responsible for operating the .XXX domain, is offering a potential solution to concerned trademark registrants by offering a period to “opt-out” of .XXX domain registrations. The option to “opt-out” is otherwise known as “Sunrise Period B” and will run from September 7, 2011 to October 28, 2011. Sunrise Period B will permit companies, licensees, assignees and individuals with trademarks that were formally registered as of Sept. 1, 2011, to apply to have their trademarks permanently blocked from the .XXX registry. To successfully do so, a registrant must present its trademark by way of an application to an accredited .XXX registrar. This process involves a one-time fee, typically in the range of $200 to $250 per domain name. Once blocked, the protected domain name will be removed from the ICM registration pool. Additionally, that domain name will simply resolve to an information page stating that the domain name is not available for .XXX registration.

Significantly, the following are not considered formally registered trademarks that qualify for Sunrise B eligibility: (1) trademarks or service marks for which an application for registration has been filed, but is not actually registered by the competent public authority or intergovernmental organization prior to Sept. 1, 2011; (2) trademarks or service marks for which an application has lapsed, been withdrawn, revoked, canceled, or otherwise is no longer in full force and effect; (3) unregistered trademarks or service marks (including common law); U.S. State trademarks or service marks; (4) international applications for the registration of trademarks, made through the Madrid system, unless these are based on or have resulted in a registered trademark of national effect; or (5) U.S. supplemental registrations; or any other rights in a sign or name, including domain names, trade names, and appellations of origin.

It is also worth noting that while an opt-out is the most prudent course of action for trademark owners, doing so will not preclude a third party challenge. Given the intended purpose of the creation of a .XXX domain, priority will be given to members of the adult entertainment industry who can establish ownership of a registered trademark or another top level domain. Conflicts between applicants from the adult entertainment industry and Sunrise B trademark owners outside the industry will be resolved by ICM.

Although it may be a nuisance for trademark owners to quickly consider and decide on a course of action, consulting with trademark counsel and acting quickly during the Sunrise Period B has the potential to save a great deal of time, inconvenience and aggravation in the long run. Indeed, trademark owners who wait until after October 28, 2011 to protect their marks will risk post-launch recovery costs, costs which often run into the thousands of dollars per domain name. In addition, and more critically, they run the risk of permanently harming their trademarks and brands. Gibbons P.C. is available to provide counsel on .XXX domains, as well as all other trademark and IP matters.

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