Sunrise Period now open for the .xxx registry

After a decade of controversial discussions, the Internet Corporation for Assigned Names and Numbers (ICANN) has approved the introduction of a .xxx top level domain (TLD) for the adult entertainment industry. New .xxx domain names can only be registered and used by those in the adult industry or those who provide products and services to the adult industry. While the .xxx TLD is targeted towards the adult entertainment industry, many brand owners are concerned with preventing their registered trademarks from being used in connection with the .xxx TLD. Today, ICM Registry (the registry for the .xxx TLD) issued its long-awaited Launch Plan and Related Policies setting forth important details about the sunrise registration periods.

Excluding Registered Marks from .xxx Registry

In response to brand owner concerns, ICM Registry is providing owners of registered trademarks a “sunrise” period during which applications to exclude registered marks from the .xxx registry will be accepted. The sunrise period for such trademark owners, referred to by ICM Registry as “Sunrise B,” opens before .xxx domain names can be registered and runs from September 7, 2011 to October 28, 2011. During this time, any owner of a nationally registered trademark may apply to block its trademark from the .xxx registration process—i.e., can pay a fee to remove a mark from the universe of registrable domain names.

The filing fees associated with Sunrise B applications vary significantly by registrar and range from $200 to $400. Applications may be filed with a number of registrars, including Network Solutions, Enom and GoDaddy. com. Applicants will be required to provide (1) the trademark, (2) the country that issued the trademark registration, (3) the trademark registration number, (4) the date on which the trademark registration issued, (4) the international classes covered by the registration and (5) the applicant’s status (owner, licensee or assignee) as a part of their Sunrise B application.

An accepted Sunrise B application will prevent the domain name <[registered mark].xxx> from being registered by any third party. However, domain names that are not identical to the registered mark will not be blocked. Thus domain names that contain misspellings of a registered mark or that add additional word elements will not be blocked by a Sunrise B application.

An Application to Exclude a Trademark From the .xxx Registry Is Not Automatically Granted

ICM Registry is offering members of the adult industry a “Sunrise A” period to pre-register and reserve domain names that are identical to (1) trademarks in which the member owns a national trademark registration or (2) domain names the member owns in any other TLD. A Sunrise B application, filed by a non-adult industry

brand owner, will only be granted where there is no competing Sunrise A application filed for the same mark. When competing Sunrise A and Sunrise B applications are filed, both applicants will be notified of the competing applications, and the Sunrise A applicant will have the opportunity to withdraw its application for the domain name. If the Sunrise A applicant does not withdraw its application, it will be awarded registration of the domain name.

Dispute Resolution Procedures

If infringing domain names are registered by third parties in the .xxx TLD, there will be dispute resolution procedures available to trademark owners to challenge those domain names.

ICM Registry has announced that it will offer a Rapid Evaluation Service (RES) through the National Arbitration Forum (NAF) when there is clear abuse of a well-known registered trademark. The RES process mirrors the longstanding Uniform Domain Name Dispute Resolution Policy (UDRP) with a few important distinctions. First, RES has the ability to provide a brand owner with immediate relief as NAF is given the authority to require a registrar to disable a domain name during the pendency of the RES procedure. Relief, if granted, will be issued within two business days of a complaint being filed. Second, the RES process is shorter than the UDRP process, with a final decision being issued within approximately three weeks of filing. Third, relief under RES does not award a domain name to a mark owner. Instead, the domain name is placed in a registry reserved status preventing anyone from registering the domain name in the future. This relieves a brand owner from the burden of maintaining a domain name registration and paying renewal fees for a domain name it likely has no interest in using.

RES does not replace the UDRP process, which will remain available as an alternative mechanism for challenging .xxx TLD domain names. Further, it remains possible to resort to traditional civil litigation to challenge a .xxx TLD domain name.

Recommendation

We recommend that brand owners file applications with ICM Registry during the current sunrise period (ending October 28, 2011) for as many of their nationally registered marks as budgets permit. Although the cost of filing a Sunrise B application can range from $200-$400 per mark, it will likely cost far more than this to resolve each infringing domain name registration in the future. As noted above, sunrise registrations will not block all potentially infringing domain name registrations; however, they will block the most significant potential infringements. As to other infringements, the RES procedures offer important new relief to brand owners that we believe could prove useful in quickly addressing and resolving infringements in the .xxx TLD.