On March 31, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN), the gatekeeper of Internet domain names, signed a sponsored TLD (top-level domain) registry agreement with ICM Registry for the administration of the new “.xxx” TLD. “.xxx” is to be the new (though not exclusive) online home for adult entertainment websites. The signing marks the culmination of a 10-year effort by ICM Registry and follows a contentious vote by the ICANN board to approve the TLD at its meeting in San Francisco on March 18, 2011.

Now that “.xxx” is a reality, brand owners should be prepared in order to prevent possible infringement and disparagement of their brands. It is expected that a limited, 60-day “sunrise” registration period may commence around August 28, with general registration of .xxx domain names commencing around October 28, 2011. As discussed below, trademark owners can pre-reserve defensive .xxx domain names encompassing their marks now, free of charge, if they wish. Later, there will be an opportunity to register defensive domain names, for a fee.

The What and Why of .XXX

Undoubtedly, ICM anticipates a lucrative business in selling and managing the .xxx TLD, in view of the fact that pornography continues to be responsible for a large amount of the internet’s traffic. “.xxx” is a “sponsored” TLD, which means that it will be open to only a specified group of applicants. In its history, ICANN has designated certain TLDs as “sponsored” TLDs that place restrictions on the type of entity that may apply for domain names with the sponsored TLD extension. For example, “.aero” is only open to members of the air-transport industry, and “.museum” is only open to museums. Here, the sponsored community consists of the online adult entertainment industry and those who supply products and services to it (the Community). While existing sponsored TLDs have relatively few domain names attached to them, that seems unlikely to be the case with “.xxx.”

According to ICM Registry, the purpose of the “.xxx” TLD is to provide an easy way to identify websites that display adult-oriented content. The ICM Registry website states, “[d]espite a very large online marketplace for adult entertainment, large sections of society do not wish to come in contact with its products and as such ‘.xxx’ provides both willing consumers of adult entertainment and those who wish to avoid it with an easily identifiable mark — the end of the web address.”¹ Of course, this statement assumes that those operating adult-entertainment destinations will migrate to “.xxx” in lieu of “.com” or “.net.” However, this is unlikely to be the case. Rather, it is more likely that operators of existing adult-entertainment destinations will fold a “.xxx” domain name into their existing domain name portfolios and use it to redirect users to their dominant, existing locations. Regardless of how members of the Community use “.xxx,” and judging by the number of domain names that have been “pre-reserved,”² there are likely to be hundreds of thousands, possibly millions, of new domain names for brand owners to monitor.

Brand Protection and the .XXX TLD

If there is one topic that makes most brand owners take notice with respect to brand protection, it is pornography. Many brand owners have encountered their brands used in domain names that direct to sites containing pornographic content, or have had their brands otherwise used in connection with online pornographic content – especially where famous brands are concerned.

The addition of the “.xxx” TLD to the domain name landscape broadens the area for brand owners to monitor. Fortunately, traditional brand protection mechanisms, such as domain name watch services and the Uniform Domain Name Dispute Resolution Policy (UDRP), will be applicable to “.xxx.” Importantly, domain name registrants will be required to provide comprehensive identification and contact information which will be available publicly, resulting in a so-called “thick” WHOIS registry. This will facilitate the ability of trademark owners to identify and act against infringers. ICM Registry has also incorporated four additional rights protection mechanisms into the roll-out and administration of “.xxx” that should benefit trademark owners: (1) a pre-reservation period; (2) a sunrise period; (3) a so-called Start Up Trademark Opposition Procedure (STOP); and (4) a streamlined pre-UDRP-type service providing a possible temporary take-down of an infringing site within 48-hours.

Pre-Reservation

The pre-reservation period, which has already commenced, allows anyone – both Community members and those outside the Community – to present ICM Registry with a list of “.xxx” domain names that it would like to reserve online. For requests of more than 100 domain names, a spreadsheet may be uploaded. See http://domains.icmregistry.com/. There is no guarantee that names submitted during this pre-reservation period will be available during the registration period, but there is no cost to pre-reserve names. Pre-reservation is an extra precaution. Defensive names that are not pre-reserved should still be registrable during the sunrise period.

Sunrise

Commencing around August 28, 2011 and running for 60 days thereafter, a brand owner can defensively register domain names even if it is not a member of the Community. These domain names will then be reserved/blocked for so long as the “.xxx” TLD is in existence. If typed into a browser, the defensive domain name will resolve to a plain page indicating that the domain name is reserved from use through ICM’s rights protection program. There will be a one-time fee (amount not yet determined) that will cover the submission, processing and validation of the reserved name. Additional fees to renew the registration will likely be required.

Start Up Trademark Opposition Procedure (STOP)

The STOP procedure will be available from about May 30 to August 28, 2011. During this start up period for the .xxx registry, IP owners can prevent a proposed infringing name from being activated for a limited time, and try to convince the applicant to withdraw the proposed name. Thereafter, a UDRP complaint would apparently need to be initiated. The rules governing STOP have not yet been published.

Pre-UDRP

This procedure will apparently provide trademark owners with a “notice and takedown” tool similar to what is used by copyright owners under the Digital Millennium Copyright Act. It appears that filing a streamlined complaint can result in a temporary suspension of an offending domain name and take-down of an associated website within 48 hours. The filing would need to be followed very shortly by a standard UDRP complaint. The rules governing this procedure have not yet been published.

What Should Brand Owners Do?

Brand owners should consider defensively filing a pre-reservation request now for core brands, then applying to register these core brands during the sunrise period. It is also not too early to set up monitoring mechanisms so as to catch attempts by third parties to register offending domain names in the .xxx space. This will be particularly important when the sunrise period begins around August 28, since companies in the adult entertainment industry will also begin to apply to register domains at that time. Please consult with your Arent Fox trademark attorney for further information and assistance.