With the launch of each new Top Level Domain (“TLD”), brand owners are always concerned about protecting their trademark rights and preventing individuals from cybersquatting. The .xxx TLDs are coming and brand owners have only a very short period of time left to take proactive steps to prevent their brands from being used in connection with an adult entertainment website.  If you are the owner of a registered trademark outside the adult entertainment industry, chances are you do not want to see your trademark used as an .xxx domain by an adult entertainment website. Such use can potentially harm your trademark rights or adversely affect the goodwill associated with your business or products. There are steps that you can take to prevent others from registering your trademark in connection with an .xxx domain name, but time is running out.

Owners of registered trademarks outside of the adult entertainment industry have the opportunity to “opt-out” or block .xxx domain names that match their trademarks through a “blocking program.” Mark owners do this by filing a blocking application with certain domain name registrars.  The time for this opt-out process begins on September 7, 2011 and ends on October 28, 2011.

By filing a blocking application, a registered trademark owner from outside the adult entertainment industry can block the registration of a .xxx domain name matching their existing registered trademark. Applications can be submitted to block a domain name corresponding to a particular registered trademark for either ten (10) years or for the life of the trademark.

The Blocking applications can be submitted through various approved domain name registrars, and the applicable one-time fee for each application varies from registrar to registrar. A successful application will not produce a conventional domain name. Instead, successful applications will result in a standard plain page indicating only that the domain is reserved from use through a rights protection program. The name of the company requesting the block will not be disclosed in the Whois database.

Blocking requests must be based on U.S. trademarks (registered as of September 1, 2011) on the “Principal Register,” or a foreign equivalent.  The domain name requested to be blocked must correspond exactly with the trademark reflected in the registration.   Requests to block a domain name that is comprised of a trademark but also includes generic of descriptive words will not be granted. 

The blocking application process may not work in all cases. If a member of the adult entertainment industry already owns the same registered trademark for adult entertainment goods or services, or already had an active domain name incorporating the trademark in another TLD, the adult entertainment company will be able to register in the .xxx TLD even if a another trademark owner submits a blocking application. 

Filing a blocking application is the best way to keep a brand out of the .xxx domain. At the conclusion of the blocking period, a .xxx domain name that has not been pre-registered by a member of the adult entertainment industry or blocked by a trademark owner will become available to the general public.

Filing a blocking application is not the only option. Once the registry opens to the general public on December 6, 2011, a mark owner could apply to register its brand name as a .xxx domain name and simply not use it. This is a risky proposition as the brand owner might not be the first to register the .xxx TLD. It also may be more expensive. Instead of paying a one-time fee for at least 10 years for a blocking application, an annual fee for the domain name registration would apply. And if the mark owner is forced to pursue a Uniform Domain Name Resolution Policy proceeding to recover the domain, the costs go up exceptionally. Therefore owners of registered trademarks are encouraged to take advantage of filing a blocking application. Failure to act could result in unwanted over-eXXXposure.