Today the registrar for the new .xxx domain names began accepting both applications to register .xxx domain names and requests by trademark owners to block Brand.xxx or to take their marks from the list of available domain names. Why did the ICANN, the organization responsible for managing real estate in cyberspace, decide to create a new category of domain names in addition to existing .com, .net, .org, .gov and others is a topic for another day. Many adult-entertainment companies have opposed the creation of new .xxx domain names. Nevertheless, .xxx domain names are almost here. The question is how to deal with these domain names.
Obviously, the answer to this question depends on whether or not you (or your company) are a member of the adult entertainment industry or wish to be associated with adult entertainment, or do not care. The strategy also depends on how aggressive you as a trademark owner have been about policing your business' online identity.
Our recent alerts, on August 22 and 31, explain the main provisions for obtaining .xxx domain names. The most practical question our “non-xxx” clients have asked is whether they should take any pro-active steps to protect their valuable brands (trademarks). Sunrise B provisions may be the answer. (Sunrise B is for non-xxx trademark owners, while Sunrise A is for the adult entertainment industry.)
Under Sunrise B, any trademark owner may request the registry to take its registered brand off the list of available domain names. For example, our law firm Duane Morris LLP could block duanemorris.xxx. This means if you type duanemorris.xxx into an internet browser such as Microsoft Internet Explorer or Apple Safari, you will likely receive a blank page or that the website is unavailable. In the internet community's jargon, the registration of the domain name will be “non-resolving.” Whois ownership information for that domain name will mention nothing about Duane Morris LLP in connection with that domain.
The fee varies between different service providers, but generally is between US$250-US$350 per domain name. The block will remain in effect for 10 years. So, it doesn’t seem much even if you have to pay attorney’s fees to prepare and submit your Sunrise B application to the registry.
The opportunity to block the .xxx domain name for your brand will be available between September 7, 2011 and October 28, 2011. All Sunrise B applications are treated as having been submitted at the same time.
So, is it worth to block YourBrand.xxx domain name? We generally (though not always) recommend that trademark owners consider adding at least their main mark (house brand) to the reserved list. For a relatively modest investment, a trademark owner can ensure that its house brand is not improperly associated with pornography and the adult entertainment industry. If you do not take a proactive defensive measure under Sunrise B, it may cost you several times the registration fee of $350 in attorneys' fees for cease and desist letters and UDRP filing fees.
On the other hand, beyond house brands, trademark owners need to carefully consider the odds that their other marks may be improperly registered by a third-party in .xxx and the potential reputational damage to the trademark owner should such a registration occur. Given the abuse of domain names historically and the .xxx connection to sexually-oriented sites, it is possible that consumers may not believe that YourBrand.xxx is somehow associated with or endorsed by your company. Also, the post-registration protection mechanisms (such as UDRP) might ultimately suffice for trademark owners to protect their marks, should they wish to prevent use of their marks in .xxx universe.
