The Internet Corporation for Assigned Names and Numbers (ICANN) approved the .xxx top-level domain (TLD) earlier this year.  The .xxx TLD is intended for the adult entertainment industry.  For this reason, ICM Registry, the registry operator for the .xxx TLD, is giving owners of registered trademarks the opportunity to opt out and block the registration of their marks in the .xxx TLD.

Between September 7, 2011, and October 28, 2011, trademark owners can apply to reserve a domain name in the .xxx TLD, essentially removing a particular domain name from the pool of available domain names.   It will only be possible to reserve or block a domain name during this period, referred to as "Sunrise B" by ICM Registry.

If an application under Sunrise B is approved, the particular domain name (i.e., yourmark.xxx) will be unavailable for registration and will resolve to a standard informational page reflecting the status of the name as "reserved." The publicly available WHOIS information for all blocked domain names will state the registry and not any particular Sunrise B applicant. These reservations do not result in a registration in the .xxx TLD and do not convey any additional rights to successful Sunrise B applicants.  They are subject to a one-time application fee and do not need to be renewed. However, the registry may review Sunrise B reservations from time to time to verify that registered trademarks corresponding to the names that were the subject of reservation requests have not been canceled, abandoned, invalidated or otherwise terminated.

To be eligible to submit a request under Sunrise B, an applicant must have a registered trademark or service mark at a national level or an international registration with regional effect; the registration or extension of protection of an international registration must have been issued prior to September 1, 2011; and the registration must be in full force and effect. Applicants must submit the following information to the ICM Registry: (a) trademark name; (b) country or region in which the mark is registered; (c) current registration number; (d) application date and registration date; (e) classes for which the mark is registered; and (e) applicant's status (e.g., owner, licensee, or assignee of the mark).

According to ICM Registry's policy, the domain name sought to be reserved must correspond exactly to the registered mark.  The reserved domain name must include the entire text of a textual registered trademark or the complete textual component of a graphical or compound registered trademark, provided that such textual component as a whole or in all parts is not disclaimed or otherwise excluded from full rights conferred by the registration.  Marks that are registered on the United States Supplemental Register are not eligible for reservation under Sunrise B. 

In cases where it is not possible to reserve a domain name that corresponds exactly to a mark as registered, the ICM Registry has provided for alternatives.  For example, if the registered mark includes one or more spaces between words, the spaces may be removed or replaced with a hyphen.  If the registered mark includes special characters (such as "-," "@," "!," "§," "%," "^," ".," "©," or "&"), the characters may be eliminated entirely from the name, transcribed, or replaced with a hyphen. The applicant may also eliminate references to a company type, such as S.A.S., Ltd., LLP or Inc. The applicant has discretion in these limited cases.  However, each variation of a registered trademark must be submitted and paid for as a separate request during the Sunrise B period.

Trademark owners who cannot or do not reserve domain names during Sunrise B may still obtain defensive .xxx TLD registrations.   The registry's general availability phase will begin December 6, 2011.  At that time, anyone may register .xxx TLDs through accredited registrars on a first-come, first-served basis.  Registrants who are not members of the adult entertainment community may submit an application to register a non-resolving domain name.  Unlike the name reservations under Sunrise B, these would be domain name registrations that would need to be renewed and maintained.