The New Top Level Internet Domain Registry .xxx for Adult Entertainment Industry
Internet Corporation for Assigned Names and Numbers (“ICANN”) has announced the addition of new generic top-level internet domains (“gTLDs”), including the .xxx domain. The .xxx domain was specifically designed for the online adult entertainment industry, and may pose challenges for trademark owners.
While there is no requirement for the trademark owner to take any action, trademark owners who do not want to be associated with the adult entertainment industry can proactively move to “opt out” or block others from attempting to register their registered trademarks in .xxx domain names. Trademark owners from outside the adult entertainment industry may pay a one-time application fee to block the registration of domains matching their existing trademarks. The .xxx domains will remain blocked for ten (10) years or the duration of the underlying trademark registration.
There are two (2) sunrise periods for federal trademark registration owners to block others from using their trademarks in .xxx domain names. Sunrise A is for trademark and current domain owners within the adult entertainment industry who wish to register their names, and Sunrise B is for trademark owners outside of the adult entertainment industry who wish to block their names from use. The Sunrise A and B periods run concurrently until October 28, 2011, and common law and/or state trademarks are not sufficient for eligibility in these sunrise periods. During the sunrise periods, if one party tries to reserve a domain name that another party is trying to block, priority will be given to the party who wants to reserve the domain name.
After the Sunrise A and B periods end, between November 8 and November 25, 2011, members of the adult entertainment industry have the right to reserve domain names without any requirement of having an existing registered trademark or other domain name registrations. If two (2) or more parties reserve the same domain name during this “Landrush Period,” a closed auction is held at the end of the period to determine who will purchase the domain name. Beginning December 6, 2011, .xxx domain names will be generally available for registration on a first-come, first served basis.
In summary, there is no action required on behalf of the trademark owner in light of these new gTLDs, including the .xxx domain. It is recommended at a minimum, however, that owners monitor their trademarks to ensure no third parties register any domain names in the new gTLDs, including the .xxx domain, which include the owner’s names or brands. Alternatively, it is possible to proactively file a reservation during the sunrise period for the owner’s brands or trademarks to block any attempted reservation in the .xxx domain name space by third parties.
If you are a federal trademark registration owner and want to protect your mark by blocking others from registering it as a .xxx domain name, then you should consider opting-out of the .xxx domain names during the Sunrise B period. After the Sunrise B period closes on October 28, 2011, a trademark owner will need to use more traditional legal proceedings to prevent the registration and/or use of a .xxx domain name that incorporates its trademark. On the other hand, if you are a member of the adult entertainment industry and have a federal trademark registration or an existing domain name, then you should consider reserving your .xxx domain name during the Sunrise A period prior to the Landrush and general availability periods.
HJK attorneys are well versed on the trademark law and gTLD changes and how the changes may impact enforcing trademarks in the U.S. and around the world. Please contact an HJK attorney should you have any questions about the Sunrise periods.
