Trademark owners should be aware that the .xxx domain name will soon be available to the general public for registration on December 6, 2011. Although the .xxx domain name is designed specifically for the adult entertainment industry, trademark owners that are not in the industry can prevent their registered marks from being registered as .xxx domain names during the "Sunrise B" period, which ends on October 28, 2011.
In order to qualify for Sunrise B, a party must own a valid trademark registration that was issued prior to September 1, 2011. Unregistered or common law marks cannot be used as a basis to block .xxx domain name registrations during the Sunrise B period. In addition, a proposed .xxx domain name will be blocked only if it is identical to the text of a registered mark. If a Sunrise B applicant is successful, the blocked .xxx domain name will be removed from the pool of available domain names for a period of 10 years and will resolve to a standard informational web page indicating that the domain name is reserved and not available for registration.
Applications filed during the Sunrise B period are not granted on a first come, first served basis. All Sunrise B applications for the same domain name will be treated as submitted at the same time. If multiple parties file Sunrise B applications for the same mark, the domain name will be blocked as if there were only a single applicant, and there will be no refunds or apportionment among applicants. All Sunrise applicants will be notified of the claims made by other Sunrise applicants for the same .xxx domain name.
It is important to note that there is also a "Sunrise A" period that allows companies in the adult entertainment industry to register .xxx domain names that correspond with their registered trademarks. A Sunrise A applicant will be given priority over a Sunrise B applicant where the Sunrise A applicant requests registration of a .xxx domain name that is identical to a mark designated by a Sunrise B applicant.
The cost of blocking the registration of a .xxx domain name is relatively inexpensive. For example, GoDaddy.com's fee is $199 per mark. All fees are non-refundable.
Lastly, on December 6th, the general public will be able to register .xxx domain names on a first come, first served basis. If a trademark owner does not qualify or take advantage of the Sunrise B period, it can defensively register its trademarks as .xxx domain names, if available. Where the trademark owner is not in the adult entertainment industry, its .xxx domain names will not resolve to the trademark owner's website.
As a defensive measure, trademark owners should be proactive and take steps during the Sunrise B period to block registration of their key marks as .xxx domain names and consider .xxx domain name registrations once generally available. Although a trademark owner will still have other legal options available after the Sunrise B period expires (including domain name dispute proceedings and lawsuits, depending upon the circumstances), the Sunrise B procedure is a less expensive way to protect key marks from being registered as .xxx domain names.