With the expected launch of the new top level domain .XXX (see our April 28, 2011 alert at www.hro.com/files/file/publications/ALERTProtectingAgainstXXXDomains. pdf), the operator of the domain, ICM Registry, is set to begin selling top level .XXX domain names targeted for use by the adult entertainment industry. The availability of .XXX domain names impacts all trademark holders, including those who do not wish to see the name of their businesses, trademarks, or products used in connection with domain names associated with adult content websites.

Owners, assignees, and licensees of registered U.S. or foreign trademarks and service marks have a limited time to opt-out of the .XXX domains and protect their brands from being registered as domain names by others before the .XXX domains become available to the general public. A fifty-two (52) day “Sunrise” period runs from September 7, 2011 through October 28, 2011. During the Sunrise period, owners of registered U.S. and foreign trademarks and service marks in effect and issued prior to September 1, 2011 can apply to block domain names incorporating registered trademarks and protect their non-adult brands, and trademark holders of adultbrands can apply for priority registration of .XXX domains.

If you do not want your trademark or existing domain name associated with a .XXX website, you need to seek protection of the Sunrise B program. Alternatively, if you are a member of the adult entertainment community and would like to secure your trademarks and matching .XXX domains, the Sunrise A program is available.  

Sunrise B

ICM Registry created the Sunrise B program for trademark holders that are not related to the adult entertainment industry in order to prevent use of their marks in connection with a .XXX domain.

Holders of current, registered U.S. or foreign trademarks may request restriction of the domain names exactly matching their respective marks (e.g., Disney could request restriction of disney.xxx but not disneyporn.xxx).  

If a Sunrise B request is properly made (and no request is made for the identical domain name under the Sunrise A program described below), then the domain name will be removed from the pool of names eligible for registration and will be designated “reserved-trademark” or something similar. After the Sunrise period, a successfully restricted domain name will resolve to a standard informational page stating that the domain name has been reserved and not available for registration if the domain name is searched and if a third party attempts to register the domain. The one-time, nonrefundable Reservation Request fee under the Sunrise B program varies by the selected registrar, but is expected to be around $330.  

Sunrise A

The Sunrise A program allows current adult entertainment industry holders of trademarks/service marks or existing domain names to claim their .XXX domain equivalents. As with the Sunrise B program, owners of current, registered U.S. or foreign trademarks and service marks may request the domain names exactly matching their marks. Additionally, holders of domain names created on or before February 1, 2010 in another top level domain (e.g., .com, .net, etc.) may also request priority registration of the .XXX equivalent.

The Sunrise A program is available only to members of the Sponsored Community; that is, entities that (i) provide adult entertainment online, (ii) represent providers of adult online entertainment, or (iii) provide products or services to providers of adult online entertainment. ICM Registry refers to verification of Sunrise A participants, but has yet to reveal details of the verification process. In addition, it is not yet clear what qualifies as “providing products or services” to online adult entertainment providers. The nonrefundable Registration Request fee under the Sunrise A program varies by the selected registrar and is expected to be around $200. In addition, domain registration fees of about $130 must initially be paid to register the domain and annually thereafter to maintain the domain.

Conflict Between Sunrise A and B Applications

A Sunrise B application does not guarantee the registered trademark will be blocked by the registry. If a request for an identical domain name is submitted under the Sunrise A program, the Sunrise A applicant will be notified of the Sunrise B application and may withdraw their registration application. A Sunrise A applicant who does not withdraw the application will be given priority to register the domain name. The Sunrise A holder will be prevented from claiming lack of notice of the Sunrise B applicant’s claim to the mark in any subsequent dispute proceeding, which may increase potentially recoverable damages. Although other protection mechanisms remain available to trademark holders, such as the Uniform Dispute Resolution Policy (“UDRP”) and trademark infringement claims, proactive Sunrise B participation can be a cost-effective strategy for protecting and policing valuable marks.  

What to Do

The Sunrise A and Sunrise B programs enable you to prevent or control the use of your trademark or domain name equivalent in the .XXX domain space. The only option not on the table is to apply through both programs as ICM Registry will disqualify one or both of the applications. If we can be of any assistance in evaluating the best strategy to protect your marks or domain names against .XXX registration by a third party, please contact Jill Chalmers or Carol Osborne.

Additional information about ICM Registry and the .XXX domain name is available at http://www.icmregistry.com. Applications for the Sunrise A or Sunrise B program can be submitted through participating domain name registrars (e.g., networksolutions.com).