From September 7, 2011 to October 28, 2011, one internet registry company, ICM Registry, will begin selling ".xxx" website domain names. Domain name purchasers, including many members of the adult content industry, seem to be prepared: ICM Registry has already received between 500,000 and 900,000 requests for .xxx domain names. Non-adult industry entities should consider whether they need to protect their trademarks from being tarnished or diluted as domain names (i.e., in this virtual red light district. If non-adult industry companies want to protect their reputations and brand names, they have two choices: (1) purchase .xxx domain names, or (2) put their trademarks on ICM Registry's "block list," with the knowledge that the block list does not "block" purchases of domain names, it merely provides notice of participating entities' registered trademarks.

ICM Registry created two plans for allocating .xxx domain names. One plan allows companies to purchase .xxx domain names ("Sunrise A"). The other plan allows entities to deter .xxx domain name purchasers from using registered trademarks in their .xxx domain names ("Sunrise B"). Sunrise A allows any entity to purchase a .xxx domain name if the entity self-attests that it (a) is an adult content provider, (b) "represents" adult entertainment providers, or (c) provides "services or products" to the adult industry. ICM Registry will neither police nor stop entities from purchasing .xxx domain names because the purchaser is insufficiently adult-themed. Similarly, ICM Registry will not force .xxx domain purchasers to include adult content on their .xxx website. In view of the foregoing, trademark owners should consider buying domain names that incorporate their trademark to avoid having the mark appear as the address for an X-rated web site or other adult themed business.

Alternatively, if trademark owners want to deter others from purchasing xxx domain names which incorporate their trademark, trademark owners can record their registered slogans or registered brand names on the Sunrise B "block list." Importantly, the block list will not bar the purchase of a domain name that includes a company's trademark in the .xxx red light district. If a domain name purchaser wants to purchase a domain name placed on the block list, ICM Registry will allow that purchase. However, the purchaser of a block list domain name will receive a notice of the trademark owner's request. Sunrise "B" therefore actually provides little protection for the trademark owner in the sales process.

This notice, however, does provide some benefit for the trademark owner. If a purchaser uses a domain name that was listed on the block list, the trademark owner will have evidence that the purchaser used the trademark owner's brand name or slogan willfully. Evidence of willful use may expose a .xxx domain name purchaser to increased damages and attorneys fees in litigation. At bottom, however, the block list is just a weak deterrence tool. For that reason we recommend purchasing xxx domain names which incorporate valuable trademarks.

Along with defensive registration (Sunrise A), the block list (Sunrise B), and litigation in U.S. federal courts, trademark holders have other mechanisms to combat use of their marks in .xxx domains. For one, ICM Registry will be providing measures to resolve disputes within 48 hours, at a cost of between $750 to $1500. Dispute resolution rules are also provided by the private body that governs Internet domains (ICANN). To discuss ICM Registry rules, purchase an xxx domain name or list your trademark on the block list, or for any other intellectual property matters, please do not hesitate to contact us.