A new domain-name "land rush" is about to begin. The .XXX domain-name extension will soon be up for grabs, exposing countless trademark owners to the registration of "X-rated" domain names containing their marks. Aside from the obvious branding and public relations problems this may create, the registration of thousands of .XXX domain names will undoubtedly lead to widespread efforts to sell those names to legitimate trademark owners. However, all is not lost. As long as trademark owners have valid trademark registrations for their marks, they may be able to block the registration of .XXX domain names containing those marks.

"Sunrise B" Period for Blocking .XXX Domain Names

The period for filing applications to block the registration of .XXX domain names has begun and will run until October 28, 2011. This period is called the "Sunrise B" period.

Filing a blocking application during the Sunrise B period will prevent the registration of a .XXX domain name containing the trademark owner's registered mark (assuming no competing applications to reserve .XXX domain names containing the mark are filed by companies in the adult entertainment industry, as discussed below).

All blocking applications filed during the Sunrise B period will be viewed as arriving at the same time, so applications generally can be filed anytime before October 28, 2011. The exception to this rule is that some companies designated to receive blocking applications have established earlier deadlines. For example, at least one company requires that applications be submitted by October 21, 2011.

Procedures for Filing Blocking Applications

Blocking applications can be filed through numerous domain-name registrars, including well-known registrars such as Network solutions, GoDaddy.com, and register.com, as well as several smaller registrars. The list of registrars accepting blocking applications can be viewed at: http://www.icmregistry.com/registrars/. Applicants are not required to use the same registrars they used in the past to register their domain names.

Participating registrars charge approximately $200-$300 per application, depending on the registrar, and generally require the following information about the applicant's registered trademark: (1) the country that issued the registration; (2) the name of the trademark; (3) the registration number; (4) the registration date; (5) the class or classes covered by the registration; and (6) information concerning ownership of the registration, including proof of the assignment of the registration, if applicable.

Limitations of Blocking Procedures

Unfortunately, there are several holes in the blocking procedures created to protect trademark owners' rights.

  • Filing a blocking application will only prevent the registration of .XXX domain names containing the trademark owner's exact mark.
  • Blocking applications must be based on trademarks registered on the Principal Register in the United States or the equivalent in foreign countries. They cannot be based on trademarks registered on the Supplemental Register (which is reserved for trademarks considered "descriptive," but capable of functioning as trademarks), or on unregistered, common-law marks or state registrations.
  • Blocking applications can only be filed for marks between 3 and 63 characters long registered prior to September 1, 2011. At this time, blocking applications cannot be filed for one- or two-character marks. Most important, there is no guarantee that filing a blocking application will prevent registration of a .XXX domain name containing the trademark owner's registered mark. Companies in the adult entertainment industry can file applications to reserve .XXX domain names before October 28, 2011 based on registered trademarks or domain names ending in other extensions (e.g., .COM, .NET, or .ORG). This period is known as the "Sunrise A" period. In most cases, companies in the adult entertainment industry and other industries are unlikely to own registrations for the same trademarks or domain names, but, if they do, the company in the adult entertainment industry will be permitted to register the .XXX domain name.

Implications

Assuming trademark owners fail to file blocking applications before October 28, 2011 and subsequently decide to challenge the registration of .XXX domain names containing their marks, they will need to either purchase the domain names or take legal action. Legal action may be possible under various dispute-resolution procedures, including the Uniform Dispute Resolution Policy (UDRP), which is often used to arbitrate domain-name disputes, or the federal Anticybersquatting Consumer Protection Act (ACPA), but these options are likely to be far more costly than filing blocking applications. Trademark owners may therefore wish to consider filing blocking applications to safeguard their valuable trademark rights before the end of the Sunrise B period on October 28, 2011.