.XXX Top Level Domains and Trademark Protection

Protect Your Trademark from .XXX Affiliation

Domain names with the extension .XXX will be available for sale to the general public on December 6, 2011. Domain names using .XXX, known as a top-level domain, or TLD, are for use in connection with websites featuring adult content. Internet Content Management Registry (ICM Registry), a Canadian company incorporated in Delaware, created the .XXX domains as a way to address public policy concerns raised by the Internet Corporation for Assigned Names and Numbers (ICANN). The new TLD, authorized by ICANN and introduced earlier this year, allows Internet users to easily identify websites for adult entertainment.

A registered trademark owner that wants to prevent the sale of its name to an unauthorized third-party .XXX domain user may do so by filing a defensive registration to block .XXX domain names corresponding to its trademarks. This procedure, called the “Sunrise B Period,” allows registered trademark owners to file an opt-out request with participating domain name registrars, such as godaddy.com or Network Solutions. The fees for this defensive registration are set by the registrar, and are typically in the $200-$300 range. Once granted, this defensive registration gives the Sunrise B applicant the right to block others from using the domain for the life of the contract between ICM Registry and ICANN, which is currently 10 years. It does not, however, grant the applicant ownership of the domain itself.

Those that do not meet the eligibility requirements for a Sunrise B Period opt-out include pending U.S. trademark applications, U.S. registrations on the supplemental register, common law or unregistered trademarks, and state trademark registrations. The registered trademark forming the basis of the Sunrise B application must be valid as of September 1, 2011. Priority will be given to parties with domain names in other TLDs prior to February 1, 2011. Only a domain name that corresponds exactly with the trademark reflected in the registration may be blocked for sale. Registration of domain names that are comprised of typographical errors or that include generic or descriptive words in addition to a trademark may be registered once .XXX domain names become available to the general public.

While it may seem unfair or impractical to try to defensively block any domain name that could harm the goodwill of a particular trademark, it is much more cost-effective to obtain a defensive registration than to prevent such cybersquatting by attempting to obtain the domain name from a third party later.

The opt-out period for registered trademark owners, which began on September 7, will end on October 28, 2011.

You can visit our Test Your Trademark page and activate our Brand Meter™ feature here: TEST YOUR TRADEMARK