Summary

Earlier this year, the Internet Corporation for Assigned Names and Numbers (ICANN) approved “.xxx” as a new top level domain (TLD), set to launch before the end of 2011.

Once launched, websites associated with the adult entertainment industry will be able to take on addresses ending in .xxx. This will allow members of the industry to more easily identify websites that contain adult content and thereby more easily attract customers.

Recently, ICM Registry, the company responsible for administering the .xxx TLD, released details of the pre-emptive options and enforcement mechanisms that will allow brand-owners outside the adult entertainment industry to prevent registration of domain names in the .xxx TLD that correspond to their trade-marks. These options are briefly outlined below.

As not every option is available in all circumstances, and some are only available for a limited time, brand-owners should carefully consider the option or options that best suit their needs and interests.

Pre-emptive Options

Sunrise B (September 7, 2011 – October 28, 2011) – During this period, owners of registered trade-marks, on payment of a one time fee, may reserve domain names in the .xxx TLD corresponding to their registered trade-marks. Reserved domain names will be removed from the pool of available domain names and will resolve to a standard information page indicating that the domain name is not available.   

Potential Sunrise B applicants should note that a parallel sunrise period, “Sunrise A”, allows members of the adult entertainment industry to apply for domain names corresponding to their own registered trade-marks or domain names in another TLD. In the event that a Sunrise B application conflicts with a Sunrise A application, the Sunrise A application will be given priority. However, a notice will be sent to both applicants such that the Sunrise A applicant will not be able to claim lack of knowledge in any later dispute over the domain name.

General Availability (Begins December 6, 2011) – Beginning December 6, 2011, brand-owners may reserve, on a first come, first served basis, other names such as trade-names, personal names, or product names that do not qualify for reservation during the Sunrise B period.  

Enforcement Options

Uniform Domain Name Dispute Resolution Policy (UDRP) – Like domain names in some other TLDs, .xxx domain names will be subject to the UDRP which allows rights-holders to seek cancellation or transfer of a domain name where the registrant (i) has no legitimate interest in the name; and (ii) registered and is using the name in bad faith.

Rapid Evaluation Service (RES) – Designed as a faster, simpler version of the UDRP in clear cases of abuse of well-known and distinctive registered trade-marks of significant commercial value, the RES allows for a preliminary suspension of an offending domain name within days of the complaint with a final determination following shortly thereafter.

Charter Eligibility Dispute Resolution Process (CEDRP) – This process allows third parties to challenge domain name registrants for non-use, use inconsistent with the qualification for registration of a .xxx domain name, or improper Sunrise A registration.