You may be concerned that your company's registered marks could soon be available for use by the adult entertainment industry in domain names that end with .xxx. For example, if your company does not obtain blocking of its names and marks as described below, your company may be harmed if a member of the adult entertainment industry launches a web site with an address that consists of www.yourcompanynameortrademark.xxx.

As we reported in the Summer 2011 issue of Expect Focus®, the Internet Corporation for Assigned Names and Numbers is launching a new .xxx sponsored top-level domain ("sTLD") for the online adult entertainment industry (the "Adult Sponsored Community").  

Beginning on September 7, 2011 and concluding on October 28, 2011, non-members of the Adult Sponsored Community who own national trademark or service mark registrations that were issued on or before September 1, 2011, may submit opt-out applications to reserve .xxx domain names, to block such nationally registered marks from being used by others as .xxx domain names ("Sunrise B"). "Sunrise A," which takes place during the same time period as Sunrise B, is for members of the Adult Sponsored Community.

The .xxx domain name to be reserved must correspond to the text of the registered trademark or service mark, and such text cannot be the subject of a disclaimer. If the text of the registered mark includes any spaces, the spaces may be removed or replaced with a hyphen. If the text includes special characters that do not comply with current Domain Name System standards (e.g., !, &, %, & or @), such characters may be eliminated, transcribed, or replaced with a hyphen.

The cost for one opted out .xxx domain name is expected to be in the range of $200 to $400 for a period of ten (10) years. Each .xxx domain name that is approved via a Sunrise B application will be set to resolve to a standard informational page that indicates the .xxx domain name is reserved. Reserved .xxx domain names convey no other rights to successful Sunrise B applicants, and the use of proxy services is prohibited for Sunrise B applications.  

Commencing on December 6, 2011: (a) all members of the Sponsored Adult Community may apply on a first-come, first-served basis to register .xxx domain names; and (b) all non-members of the Adult Sponsored Community may apply on a first-come, first-served basis for non-resolving (blocked) .xxx domain names, without having to meet Sunrise B qualifications ("General Availability").

To avoid the significant costs and expenses that would likely be involved with enforcing trademark rights against .xxx domain name operators (especially as compared to the $200 to $400 10-year opt-out fee), qualifying companies should consider submitting .xxx opt-out applications during the Sunrise B period. In addition, commencing on December 6, 2011, all companies and individuals should consider the prompt submission of opt-out applications to block names (including personal names) and marks (including marks that are similar to their registered marks) in which they have a legitimate interest.  

Most of the well-known domain name registrars (e.g., Network Solutions, GoDaddy.com, Register.com) will be taking opt-out applications commencing on September 7, 2011, and several are already accepting pre-orders for Sunrise B and General Availability applications.

More information on the .xxx sTLD can be found here and here.