CLIENT ADVISORY: Sunrise Period for Trademark Owners Seeking to Defensively Block Registrations of .xxx Domain Names Is Now Open

The new .xxx top-level domain (TLD), designed to cater to the online adult entertainment community, is now available for registrations. But brand owners with registered trademarks outside that industry have a limited opportunity to defensively block registrations before the operator of a pornographic website claims BRAND.xxx – as long as the brand owner acts before the blocking period closes on October 28, 2011. After that date, trademark blocks will no longer be available.

Background and Key Dates

In late March of this year, the Internet Corporation for Assigned Names and Numbers (ICANN) approved .xxx as a new sponsored TLD designed for use by providers of “online adult entertainment intended for consenting adults,” and those who provide products or services to those providers (the “Sponsored Community”). ICM Registry LLC, appointed by ICANN, will start to launch the .xxx TLD, on December 6, 2011.

Before the launch date, there are two Sunrise periods to note (A and B) that run from September 7, 2011 through October 28, 2011. The Sunrise A category includes only members of the Sponsored Community who: (a) either own a registered trademark in use, and/or (b) operate a corresponding domain name created on or before February 1, 2010.

If a brand owner is not in the Sponsored Community, it may qualify for the Sunrise B category if it owns a trademark or service mark registration issued prior to September 1, 2011. Because the .xxx TLD is designed for the Sponsored Community, domain names reserved under Sunrise B will not technically be registered but will resolve to a standard page that indicates that the name is not available for registration. After the sunrise period, the “Landrush” phase of registration will be open from November 8 through 25, allowing members of the online adult entertainment industry to register .xxx domain names. The General Availability period opens on December 6, 2011 at which point anyone may register a .xxx domain name. During Landrush, competing requests will be allocated in a closed auction. After General Availability opens, domain names will be granted on a first-come, first-served basis.

What types of trademarks are eligible for Sunrise B reservation?

Only trademarks registered before September 1, 2011 and valid at the time of the domain name application are eligible for the Sunrise B period. The ICM Registry may also require proof of use in commerce, a caveat that is particularly relevant to those who intend to rely on registrations in countries where (unlike in the U.S.) proof of use is not required for registration. All other marks are ineligible, i.e., trademarks that are the subject of pending applications as of September 1, 2011, “dead” marks, marks with all text disclaimed, unregistered trademarks, U.S. state trademarks, marks that are the subject of international applications through the Madrid system (unless there is a corresponding registered national trademark), and marks on the Supplemental Register.

While trademark owners with hyphens, ampersands or other special characters in the name may record the mark to be blocked in forms with and without the special character, defensive registration against “typosquatting” is not permitted in the sunrise phase. The block must correspond to the exact trademark without any additional letters or terms, or any misspellings.

How much will it cost?

Fees vary by registrar, but filing fees charged by the registry are estimated to range between $200 to $500 per mark. For Sunrise B, this is a one-time fee only, and there are no annual registration fees.

How long does the block last?

Subject to any enforcement policies, the Sunrise B registration is permanent. However, the ICM Registry does have the right to reinstate any name if the underlying trademark registration used to reserve it lapses.

After the sunrise period there will be no permanent opt-out. Non-members of the community may register a non-resolving site and keep the registration by paying annual renewal fees.

For those brand owners who do not want to police the .xxx domain over the years, the Sunrise registration may have its advantages in spite of the fees. Already many celebrities have taken advantage of the blocking period to protect their names.

If you have any questions on this advisory, please contact your CDAS attorney.