As many of you may be aware, the Internet Corporation for Assigned Names and Numbers (“ICANN”) approved the formation of a new .xxx top-level domain for the adult entertainment industry, set to launch later this year. ICANN has asked ICM Registry (“ICM”) to operate this new domain. Importantly, ICANN/ICM will establish a defensive registration process, beginning during the “Sunrise” period, to permit trademark owners to block others from using the owner’s registered trademarks as the second-level domain of the domain name, i.e., as “[trademark].xxx.” Some sources believe that the Sunrise period could begin as early as June 2011, while others cite August 2011 as a possibility.

Despite the uncertainty in dates, a pre-registration period is currently available via the ICM website, located at http://domains.icmregistry.com. Once a trademark owner pre-registers a mark, ICM will notify the owner when the defensive registration period begins, as well as provide the owner with any necessary forms and fee information. However, the preregistration process does not convey trademark owners any ownership in the reserved names, it is simply an expression of interest in ultimately registering the domain name during the Sunrise period. While it is not necessary to pre-register a domain name in order to defensively register that domain name during the Sunrise period, it may be worthwhile to do so in order to be notified when this defensive registration period will begin and about the availability of the names indicated. In addition to receiving this advance notice, there is no fee to pre-register a mark.  

Once the Sunrise period begins, ICM will allow owners of registered trademarks to block registration of .xxx domain names containing those trademarks by paying a one-time fee that has yet to be determined. The end result will be that anyone attempting to access a defensively registered .xxx site will receive a message indicating the name has been reserved from registration. The defensive registration will last the life of the .xxx registry.  

We note that trademark owners who do not pre-register and/or defensively register their trademark(s) will still be able to rely upon traditional rights protection mechanisms, such as the Uniform Domain Name Dispute Resolution Policy, should the need ever arise.