The Internet Corporation for Assigned Names and Numbers (ICANN) has approved the launch of a new sponsored top-level domain (sTLD), .XXX, which will be available beginning September 7, 2011. As the name suggests, the .XXX sTLD is specifically designed for the benefit of the global online adult entertainment industry. For brand owners outside of that industry however, .XXX presents a concern: The YOURTRADEMARK.XXX domain name may soon be registered and used as a porn site.
As with the launch of other top-level domains, .XXX domains will be available in stages. Concurrent sunrise periods will run from September 7, 2011 through October 28, 2011, during which owners of registered trademarks both inside and outside the adult entertainment industry may take action to reserve .XXX sTLDs corresponding to those marks before the domains are available for purchase to the general public. "Sunrise A" is reserved for owners of registered trademarks or other top-level domains that are already being used in the adult entertainment industry. "Sunrise B" is for non-adult industry owners of registered trademarks, who can reserve their MARK.XXX domains to prevent another from registering and using those domains for adult content.
To reserve a MARK.XXX domain during Sunrise B, the brand owner must own, as of September 1, 2011, a registration for the exact corresponding mark either on the USPTO's Principal Register or with the trademark office of a foreign jurisdiction. Details of that registration, along with a one-time fee must be provided. While the one-time fee amount has yet to be finalized, it is expected to be approximately $200 – $300. If this registration is completed, the blocked .XXX sTLD will resolve to a standard informational page stating that domain has been reserved. The brand owner will not actually own the .XXX domain and thus, will not be listed in public Whois data.
An application to reserve a MARK.XXX domain name during Sunrise B may not be successful if someone else applies for the same domain based on a registration for the same mark with adult products or services. In that case, the owner of that registration (for adult products and services) will obtain the domain.
After the sunrise periods, there will be ICANN dispute resolution mechanisms available if someone other than a trademark owner registers in bad faith a .XXX domain that is identical or confusingly similar to another's trademark. Nonetheless, it will be far more cost effective to take advantage of the Sunrise B period than to try to recover the domain name later through a domain name dispute proceeding. Accordingly, owners of registered trademarks should consider which of those marks are of most importance and submit reservation requests for the corresponding .XXX sTLDs once the Sunrise Period opens in a few weeks.
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.
