United States: Will Your Trademark Be Rated ‘.XXX’?

After years of contentious proceedings, the Internet Corporation for Assigned Names and Numbers (ICANN), the organization responsible for coordinating the Internet's naming system, has finally approved the creation of the .xxx top-level domain (TLD). The .xxx TLD will give adult entertainment websites a clearly-marked home on the Internet and may provide Internet users with more control over their web-surfing experience.

Trademark owners have expressed concerns as to how the launch of the .xxx TLD could affect their intellectual property. For instance, what if someone registers your trademark as part of a .xxx domain name? Would this use adversely affect your mark's goodwill and threaten your company's reputation?

Fortunately, there are steps that all trademark owners can take to help control the effects of the new .xxx TLD on their intellectual property.

ICM Registry, the Florida-based company tapped to manage the .xxx TLD, has developed a "Sunrise" program to help protect intellectual property holders and minimize conflicts between traditional business owners and adult entertainment companies. We recommend that trademark owners avail themselves of this program.

According to a "Launch Plan and Related Policies" document issued by ICM Registry on July 15, 2011, the Sunrise program will consist of a multi-part registration or reservation process. The Sunrise A period will permit members of the adult entertainment industry to request registration of .xxx domains that correspond to their existing trademark registrations or domain names. In contrast, the Sunrise B period will enable non-adult-industry trademark owners to submit requests to block others from registering .xxx domains containing their trademarks. The Sunrise B period is expected to begin on Sept. 7, 2011, and end on Oct. 28, 2011. Names blocked during Sunrise B will not result in the registration of .xxx domains. Instead, the .xxx domain corresponding to the non-adult-industry trademark will be blocked from use, and will redirect users to an informational page indicating that the .xxx name is reserved.

Mark owners who wish to participate in Sunrise B may do so by submitting copies of their trademark registrations to approved domain name registrars and by paying a non-refundable fee to cover the processing and validation of their applications to block .xxx domain names. Blocks achieved during Sunrise B are expected to last 10 years, or the duration of the corresponding trademark registration.

ICM Registry's policies indicate that mark owners who do not hold national trademark registrations issued prior to Sept. 1, 2011, will not be eligible to apply to block .xxx domain names during the Sunrise B period. However, owners of unregistered marks may request registration of .xxx domain names during the General Availability period that is expected to begin Dec. 6, 2011. Registration during the General Availability period will be on a first-come, first-served basis. Unless the mark owner is a member of the adult entertainment community, any .xxx domain names registered during the General Availability period will not be associated with active web sites.

Intellectual property holders may wish to monitor the new .xxx domain names through a domain name watch service, and to enforce their trademark rights through dispute resolution mechanisms such as ICM Registry's Rapid Evaluation Service. ICM Registry is expected to announce the procedures and fees for the Rapid Evaluation Service in September 2011. Traditional remedies under the Uniform Domain Name Dispute Resolution Policy should also be available.

The launch of the .xxx TLD marks the beginning of the top-level domain expansion announced by ICANN in June 2008. At a June 20, 2011, meeting in Singapore, ICANN approved a plan to open unlimited TLDs for registration, which may revolutionize the manner in which brand owners do business on the web. Trademark owners will be able to register ".brand" TLDs, such as .drinkerbiddle, and generic TLDs, such as .lawfirm – albeit at significant expense. Recent ICANN announcements indicate that applications for new TLDs will be accepted starting Jan. 12, 2012.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.