Are you concerned that the name of your business or the trademark used in connection with your best-selling product will be used in connection with an adult entertainment website given the soon-to-be launched .XXX domain names? As set forth in our recent Trademark Alert, domain names ending with the generic top level domain (gTLD) .XXX will be available to the general public starting in December 2011.

Domain names using this gTLD are for use in connection with websites featuring adult content. If you own a registered trademark, you probably do not want to see the domain yourtrademark.xxx used by an unauthorized third party in connection with an adult entertainment website. Such use may harm your trademark rights or adversely affect the goodwill associated with your business. There are steps that you can take now to prevent others from registering your trademark in connection with a .XXX domain name.

Steps That You May Take Now: Opt Out

Owners of registered trademarks may “opt out” of having those trademarks sold as part of the .XXX domain name offering. This procedure, called the “Sunrise B Period,” allows trademark registration owners to file an opt-out request with participating domain name registrars. The Sunrise B Period begins on September 7, 2011 and ends on October 28, 2011.

During the Sunrise B Period, owners of registered trademarks can block the relevant domain name corresponding to a particular trademark registration from being registered or used. Applications can be made through approved domain name registrars, such as GoDaddy.com and Network Solutions, and the applicable one-time fee for the application process is determined by the individual registrars (but generally in the $200 to $400 range).

The result of a successful Sunrise B application is that the domain name incorporating the trademark will be unavailable for registration, and the domain name will resolve to a standard informational page. At the conclusion of the Sunrise B Period, .XXX domain names that have not already been pre-registered by a member of the adult entertainment industry or blocked by a trademark owner during the Sunrise B Period will become available to the general public.

Who Is Able to Opt Out and What May Be Blocked?

Owners of a US trademark registration or a foreign equivalent may submit an application during the Sunrise B Period to remove a domain name comprised of the registered trademark from the .XXX domain name offering. Pending US trademark applications, US registrations on the supplemental register, common law or unregistered trademarks, and state trademark registrations do not meet the eligibility requirements for a Sunrise B application. Moreover, the registration forming the basis of the Sunrise B application must be valid as of September 1, 2011. You may only block a domain name that corresponds exactly with the trademark reflected in the registration.

If you do not yet have a trademark registration, you still have time to act. Those who do not have a trademark registration but still want to prevent use of a trademark in a .XXX domain name can apply for an expedited registration in certain foreign jurisdictions that provide very fast registration (in some jurisdictions, as fast as 48 hours). Therefore, if you act quickly, there is time to obtain a trademark registration outside of the United States prior to the September 1, 2011, deadline and participate in the Sunrise B Period.

Can You Apply to Block Registration of Typos of Your Trademark During the Sunrise B Phase?

No. Sunrise B applications can only correspond exactly to the trademark as it appears in the trademark registration. Registration of domain names that are comprised of typographical errors of your trademark or that include generic of descriptive words in addition to your trademark may be registered once .XXX domain names become available to the general public on December 6, 2011.

Mintz Levin encourages owners of registered trademarks to take advantage of the Sunrise B Period. Failure to do so may result in the trademark being registered as a domain name by a third party and used in connection with an adult entertainment website. Moreover, it is typically more expensive to reclaim domain names incorporating trademarks that have been registered by unauthorized third parties (e.g., through a Uniform Domain Name Resolution Policy proceeding or through a negotiated settlement).