Published in the Manchester Union Leader, July 2011
This question was answered by Joel Emlen of the McLane Law Firm
Q: I understand there is a new Internet domain for pornographic content being launched with the suffix .xxx. How can I protect my trademark or existing domain name from being registered as .xxx?
A: Beginning in early September 2011, you can pay a small fee to reserve your trademark or domain name with the .xxx suffix in order to block others from doing so.
The Internet Corporation for Assigned Names and Numbers, an international organization that manages Internet Protocol Address spaces and domain names, has approved .xxx as a new top-level domain ("TLD") (like .com or .org) for use by the adult entertainment industry, or "Sponsored Community," to segregate pornographic content. Beginning on September 7, 2011, there will be a thirty-day Sunrise period, where existing trademark or domain name owners can apply for a .xxx TLD with the ICM Registry and either opt-in or opt-out of the new domain.
The Sunrise period will consist of two groups: Sunrise A, which are members of the Sponsored Community that already own and operate an existing domain name, and Sunrise B, which are members from outside the Sponsored Community that are owners of a qualifying trademark registration that seek to reserve names to ensure that others do not register that name as a .xxx TLD. There will be a registration fee between $200 and $300 for each trademark or TLD that person wants to block.
Following the Sunrise period, there will be a ten-day "Landrush" period in late October 2011, where members of only the Sponsored Community may apply for domain names. The general availability period will begin in early December 2011.
For those outside the Sponsored Community, you may want to consider taking advantage of the Sunrise B period and defensively registering your existing trademark or domain name as a .xxx TLD to avoid the time and expense of litigation, as well as the objectionable use of your trademark. For these same reasons, if you have a trademark that is not registered, you should consider doing so immediately. If another party registers your trademark as a .xxx TLD, your recourse to get that trademark back will be limited to buying it, bringing an administrative proceeding under the Uniform Domain Name Dispute Resolution Policy, or filing a lawsuit in court against the .xxx registrant.
Going forward, you should monitor .xxx registrations to guard against possible infringement and to protect your legal rights.
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.
