A new top-level domain .xxx for adult material is being launched this month. Due to the nature of the sites, trademark and service mark owners should consider taking proactive steps to protect their marks from registration as a .xxx domain.
The ICM Registry has created a limited period of time (“Sunrise B”) during which trademark and service mark owners may block others from using the marks in a .xxx domain. Between September 7, 2011 and October 28, 2011, owners can pay a one-time fee of $200 - $400 per mark (depending on the specific ICANN registrar used) in exchange for this protection. A successful Sunrise B application ensures cybersquatters cannot use the mark for 10 years in connection with a .xxx domain.
In order to be eligible for Sunrise B protection, applicants must own a trademark or service mark registration of national or regional international effect valid as of September 1, 2011. The portion of the domain preceding the .xxx must be an exact match of the registered mark – typos or non-registered variations of the marks cannot be protected during this period. Common law marks, U.S. state marks, and marks for which an application for registration has been filed, but registration has not been issued, also do not qualify.
Post-Sunrise B Protection
From November 8, 2011 to November 25, 2011, there will be an exclusive “Landrush” period for adult content companies to register .xxx domains. Apart from being a member of the adult sponsored community, there are no trademark or service mark ownership requirements. December 6, 2011 will begin the “General Availability” period, when anyone may register a .xxx domain.
Owners who fail to opt out during Sunrise B may still recover infringing domain names through traditional measures, such as ICANN’s Uniform Domain Name Resolution Policy and litigation. Such traditional measures are significantly more expensive and time-intensive than preventing the registration in the first place. Accordingly, companies wishing to be proactive and prevent the use of their marks as a .xxx domain are encouraged to take advantage of the Sunrise B protection in advance of the October 28, 2011 deadline.