The adult entertainment industry is about to receive its own designation on the internet. Similar to .com and .org, .XXX is a Top Level Domain (TLD) extension designed to signal that a website contains adult content. Brand owners will have a limited time period, September 7 - October 28, 2011, to block registration of .XXX domain names comprising their registered trademarks.

How Can Brand Owners Protect Their Registered Trademarks?

Your brand is a valuable asset. In addition to concerns regarding consumer confusion and brand protection, use of your trademark with an adult content website could impact your brand's reputation and goodwill. To address concerns of brand owners, the .XXX registry has established a limited "sunrise" period, September 7 - October 28, 2011, during which registered trademark owners outside of the adult entertainment industry can submit defensive applications, known as "Sunrise B applications", to block .XXX domain name registrations comprised of registered trademarks.

Sunrise B applications will not result in a .XXX domain name registration for your brand. Instead, if the Sunrise B application is approved, the domain name will be "reserved", which has the effect of removing it from the pool of domain names available for .XXX registration by others. Traffic to a reserved domain name will be directed to a webpage indicating that such domain name is subject to the registrar's rights protection program.

How Does The .XXX Application Process Work?

The official filing fee charged by the registrar to file a Sunrise B application is approximately $200 per trademark. To qualify for a Sunrise B application, applicants must have a U.S. federal or foreign-issued trademark registration for a trademark corresponding exactly to the .XXX domain name sought to be reserved.Trademarks under pending federal applications, supplemental registrations, state registrations, or common law do not meet the eligibility requirements for a Sunrise B application. Sunrise B applications filed at any time from September 7, 2011 through October 28, 2011 will be treated as having been filed at the same time, and no priority will be given to applications based on filing date.

During the same sunrise time frame, a member of the adult entertainment industry can submit a "Sunrise A application" for a .XXX domain name that corresponds to its registered trademark or existing domain name. A Sunrise B application will be approved if no conflicting Sunrise A application has been filed. If there are conflicting Sunrise A and Sunrise B applications, the Sunrise A application will be permitted to register, and the Sunrise B applicant may pursue a dispute resolution proceeding.  

What Does This Mean For Your Brand?

If you own a U.S. federal or foreign-issued trademark registration and are concerned about registration of your mark as a .XXX domain name, filing a Sunrise B application can be an efficient and effective mechanism to protect your rights. If you are not eligible for a Sunrise B application, e.g. because you don't own a U.S. federal or foreign-issued trademark registration, you may be able to prevent use of your trademarks in .XXX domain names through arbitration, litigation or other dispute resolution procedures. While the availability of adversarial remedies provides certain protections, having to reclaim your brand's identity through these means can be time-consuming and expensive, and may require proof of the .XXX registrant's bad faith. Thus, to optimize protection for your brand, defensive registration of some or all of your registered trademarks through the Sunrise B application process may present the best option.