As you may have heard, .com, .net and other domain name extensions are now making room for the recently approved .xxx domain name extension. The fact that .xxx domains are intended solely for the hosting of adult-oriented websites has many brand owners scratching their heads and worrying about the future. The thought of consumers being misdirected to an adult-oriented website when looking for your company is, indeed, a thought that can lead to loss of sleep. So, how can you prevent your main brand name or company name from becoming YourCompanyName.xxx?
The registration of .xxx domains will open up to the general public this December. While deeply concerning, there is good news for those determined to never see their trademark used as a .xxx domain. Two options exist for proactively preventing YourCompanyName.xxx or YourBrand.xxx from falling into the hands of a third party – the timing, process and expense of which are dependent upon whether or not you own a federal trademark registration (or foreign trademark registration) for your mark:
Trademark Registration: The ICM Registry (the registry operator for .xxx domains) has launched its "sunrise periods", providing those who own federal trademark registrations on the principal register (or a foreign trademark registration) the opportunity to "opt-out" and, in essence, defensively block their trademark from general .xxx domain availability for a period of 10 years by submitting a Sunrise B application. This sunrise period launched on September 7th and will remain open until October 28th. If you own a registration of your mark and want to block your mark from being registered by any third party as a .xxx domain, we highly recommend that you submit an application prior to October 28th. While you will not end up owning the domain or being able to post any content on it, it will be blocked from anyone registering it for 10 years. Most registrars are charging $200 for the application.
Unregistered Trademarks/Brands: A second opportunity for protection of your unregistered mark or brand will occur during general availability, which is slated to open on December 6th. During general availability, domain name registration requests will be allocated on a first come, first-served basis for registrants with the necessary credentials to be a .xxx domain name registrant – i.e., a member of the "adult entertainment industry" who has successfully applied to be a member of the .xxx "sponsored community" as defined by the ICM Registry. However, brand owners outside of the adult entertainment industry will be able to submit domain name registration requests for "non-resolving" domain names – in essence, domain names that do not resolve to a website or to content. As such, the opportunity for registering a .xxx domain name for defensive purposes would be open for those concerned about their unregistered marks, such as a brand.com domain name, a trade name, a company name and so on.
Of course, some skeptics ask if any of this is really necessary, citing to either the number of recent "TLD" launches that brought with them much hype, only to have fallen to the wayside in popularity just after a year, or to the .xxx domain name policies established by the ICM Registry. While we note that there has been a pattern of "launch and fail" with some TLDs of late, we think leaving a brand out there to be picked up as a .xxx domain name is a much riskier proposition than with a .co domain name or a .tv domain name – especially for certain businesses and their client base. And while the .xxx domain name policies are written so that people outside the adult entertainment industry are not "supposed" to be permitted to register active .xxx domain names, there is always a degree of uncertainty as to how quickly and efficiently a self regulatory process really works in the world of cyberspace and domain name monetization. Of course, there is also an economic factor – engaging in enforcement actions after the fact can be costly when compared to the costs involved in proactively blocking your mark or brand from cybersquatters.