In March 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved “.xxx” as a new sponsored Top-Level Domain (sTLD), to be operated by ICM Registry LLC. The launch of .xxx includes a “Sunrise” period, which commenced on September 7, 2011 and ends on October 28, 2011. During this time, businesses that do not want to be associated with the .xxx regime may apply to prevent their registered trade-marks from being incorporated in .xxx domain names. This option, known as the Sunrise “B” process, is only available during the Sunrise period. To be eligible, a Sunrise “B” applicant must be the owner, assignee or licensee of a trade-mark that was registered prior to September 1, 2011. A Sunrise “B” request must include the entire text of a registered trade-mark or, in the case of a design, its complete textual component.
Traditional remedies, such as ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) and formal litigation, will remain available to trade-mark holders following the end of the Sunrise period on October 28, 2011. In addition, ICM Registry LLP has implemented a Rapid Evaluation Service, which can potentially resolve disputes within as fast as two business days. However, unlike these remedies, the Sunrise “B” option is pre-emptive, and may represent a more cost- and time-efficient means of IP protection. Each Sunrise “B” application costs a one-time fee of approximately $300 - $350 USD, and a separate request is required for each registered trade-mark, and variation thereof.
If a Sunrise “B” applicant is successful, its trade-mark will not be available for registration as a .xxx domain name in the future. The corresponding domain name will resolve to a standard informational page indicating the status of the domain name as not available for registration.
Note that the Sunrise period also allows qualifying adult entertainment providers and their representatives to pre-apply for .xxx domain names through the Sunrise “A” process. Where a competing application is made by Sunrise “A” and “B” applicants, the former, i.e. the adult entertainment provider, will be given priority. However, all parties will be notified accordingly and the Sunrise “A” applicant will receive an opportunity to withdraw its application. As a result, the Sunrise “A” applicant cannot claim a lack of notice of the trade-mark holder’s rights in a subsequent dispute.
Although the Sunrise “B” option may impose considerable upfront costs on companies with extensive trade-mark portfolios, it also has the potential to avoid more significant costs down the road. Sunrise “B” applications can be made through an accredited registrar, a list of which can be found at the following link: http://www.icmregistry.com/registrars.