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How to Prevent Your Trademark From Becoming a .XXX Domain

October 14, 2011
Earlier this year, the Internet Corporation for Assigned Names and Numbers (or ICANN) approved the creation of a top-level domain (TLD), .XXX, intended for websites in the adult-content industry. If you own a federally registered trademark, you should act now to prevent your mark from being associated with an adult-content .XXX domain name. Responding to the concerns of brand owners, ICM Registry, LLC, the .XXX TLD registry, is allowing trademark owners to "block" .XXX domain names comprising their marks. Between now and October 28, 2011 (the "Sunrise B" period), if you own a registered mark, you may file a defensive request to block others from obtaining a .XXX domain name that corresponds exactly to your registered mark. If the request is successful, the blocked .XXX domain name will be removed from the pool of available domain names. Internet users attempting to access it will be directed to a standard informational web page indicating that the domain name is not available for registration. Your organization's name will not be connected to the blocked domain; rather, the "WhoIs" owner information page will list ICM Registry as the owner of all blocked domains.

If you own a federal trademark registration

To qualify for the Sunrise B protection:

  • You must file your request with an approved domain name registrar. (This includes many U.S. based registrars and likely includes the entity that handles your organization's domain names – see www.icmregistry.com/registrars for a complete list). The cost is approximately $200-$300 per request.
  • You must file the request between now and October 28, 2011.
  • You must file a separate request for each domain name you wish to block.
  • You must own a U.S. trademark registration on the Principal Register, or a foreign trademark registration, that was issued prior to September 1, 2011. Pending applications for registration, Supplemental Register registrations, and common-law trademark rights cannot be used as a basis for this request.
  • The .XXX domain name requested must correspond to the mark shown in your trademark registration.
Members of the adult-content industry will have the opportunity to reserve .XXX domain names for use during this same sunrise period, if they own: (a) a substantially equivalent registered trademark for goods or services related to adult-content issued before September 1, 2011, or (b) an active and equivalent domain name registered before February 2010. In the event of a conflict between a trademark owner and a member of the adult-content community with a valid claim, the parties will be notified of each other's claims, but the domain will be awarded to the adult-content industry member. Other dispute-resolution procedures are available to the trademark owner. For example, the current Uniform Domain Name Dispute Policy (or UDRP) may be invoked to object to domain names that infringe an owner's trademark rights. 

If you own a registered trademark, we encourage you to utilize this process as a defensive measure to block registration of your trademark as a .XXX domain name. The process promises to be an efficient and effective mechanism to protect your trademark rights and to avoid potentially time-consuming and costly litigation or dispute-resolution procedures down the road.

If you do not own a federal trademark registration

If you miss the sunrise period or if you do not qualify because you do not own a registered trademark, you can still defensively register .XXX domains once the "general availability" period opens on December 6, 2011. Beginning December 6, .XXX domain names not previously registered or reserved will be available to the general public on a first-come, first-served basis. Trademark owners that are not members of the adult-content industry will be able to register a .XXX domain name and effectively "reserve" the domain name. The .XXX domain name will not be connected to your organization, but, unlike the "Sunrise B" reserved names, they will be subject to annual renewals.  Many registrars are currently accepting applications for registration of .XXX domain names that will become available on December 6, 2011. 

For more information, please contact:

Sharon Schick, sschick@capdale.com, 202-862-7856

Caplin & Drysdale   

Washington, D.C. Office: One Thomas Circle N.W., Suite 1100
Washington, D.C., USA 20005
PH: +1 202-862-5000 FX: +1 202-429-3301 

New York Office: 375 Park Avenue, 35th Floor
New York, New York, USA 10152
PH: +1 212-319-7125 FX: +1 212-644-6755

www.caplindrysdale.com 

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Caplin & Drysdale provides a full range of tax and legal services to companies, organizations, and individuals throughout the United States and around the world. The firm also offers private client counseling, exempt organizations counseling, employee benefits counseling, corporate law counseling, political activity law counseling, white collar defense, and complex civil litigation services.

This announcement does not provide legal advice, nor does it create an attorney-client relationship with you or any other reader. If you require legal guidance in any specific situation, you should engage a qualified lawyer for that purpose. Prior results do not guarantee a similar outcome.