A new top-level domain name, “.xxx”, will soon join the ranks of .com, .net, .org and other domain name extensions on the Internet. Following the recent approval by the Internet Corporation for Assigned Names and Numbers (“ICANN”), .xxx has been authorized for the adult entertainment industry. Some trademark owners are understandably concerned that their marks may be used with the .xxx extension in a manner that would confuse the public or tarnish their marks.
Trademark owners will have an opportunity to apply to preemptively block their trademarks from the .xxx registry during a 30 day “sunrise” period, that will run from September 7, 2011 to October 7, 2011. Owners of a registered trademark or service mark, or their authorized licensees or assignees, may apply to block the registration of the subject mark as a domain name. The application process contemplates that only domain names exactly corresponding to the text of a registered mark may be blocked. Accordingly, during the sunrise period, applicants will not have an opportunity to block alterations (for example, if another term, symbol or letter is added to or deleted from a mark) or misspellings. The cost to apply for domain-name blocking is expected to be between $200 and $300 (without further annual fees). More details regarding the launch of the .xxx registry and applications for domain name blocking are available at these sites: http://icmregistry.com/launch.php and http://icmregistry.com/registrars.php.
In the event that a trademark owner does not block its trademarks from registration in the .xxx registry, or if variations of its trademarks are registered in the registry, there will be an opportunity to challenge such registration and use, including by means of arbitration under ICANN’s Uniform Domain-Name Dispute-Resolution Policy (“UDRP”), or by litigation.
For many trademark owners, the decision of whether to apply to have their trademarks blocked from the .xxx registry will ultimately depend upon whether they conclude that the cost for prevention is less than the cost to effect a cure. If you would like to discuss a strategy to protect your trademark portfolio from becoming XXX rated, or if you would like assistance with completing an application for domain name blocking in the .xxx registry, please contact your Michael Best attorney.
This article also was published in the National Law Review, an informational and analytical web site providing current legal analysis to those seeking concise and pertinent legal information.