What you need to know

The registration process for a new domain extension, .XXX, has commenced.  Although this extension was created for the adult entertainment community, until October 28 registered trademark owners may file applications to protect and block their trademarks from .XXX registration.

What you need to do

Companies should evaluate their registered trademarks and take advantage of the available .XXX domain name blocking applications.  This will avoid possible costly disputes in the future to prevent its brands from being used with .XXX.

The Internet Corporation for Assigned Names and Numbers, the organization responsible for, among other things, coordination of top-level domain name space, continues to expand the roster of available domain names.  The next domain to go into effect is the .XXX Sponsored Top-Level Domain, which was created specifically for the adult entertainment industry.

The launch of the .XXX domain is not just important for businesses within the sponsored community of adult entertainment, however.  If you are a trademark owner and you do not want to see your trademark used in a “.XXX” domain name, you have an opportunity now to block such use.

ICM Registry, LLC, the company responsible for operating the .XXX Sponsored Top-Level Domain, has announced a three-phase launch process for registration:

  • the Sunrise period: Sunrise A and B run concurrently and end October 28;
  • the Landrush period, currently scheduled for November 8-25; and
  • the General Availability period, commencing December 6. 

The Sunrise B period, described below, allows brand owners an opportunity to prevent their registered trademarks from being used with .XXX domain names or content.

Protecting Your Trademarks

ICM Registry, LLC, the company responsible for operating the .XXX Sponsored Top-Level Domain, has established an initial Sunrise registration period to allow registered trademark owners to either register or block registration of .XXX domain names containing their marks.  The Sunrise A period is for trademark owners within the adult entertainment community who would like to register a domain name, and the Sunrise B period provides businesses outside the adult entertainment industry an opportunity to prevent the registration of their registered trademarks in a .XXX domain name.

There are a few limitations on the blocking reservations, most notably that they must be for an owner’s exact trademark, and they must be based on registered trademarks.  The trademarks can be registered anywhere in the world, but unregistered trademarks (even if subject to pending applications or Supplemental Registrations in the United States) cannot be relied upon.  At the close of the Sunrise period, if no conflicting application by a Sunrise A applicant (within the adult entertainment industry) has been made, these names will be permanently blocked from registration.  Note, however, if a conflicting application has been made by a Sunrise A applicant, priority will be given to the Sunrise A applicant.

Blocking reservations for .XXX domain names may be submitted only to an Accredited Registrar.  A list of Accredited Registrars is available on ICM’s website.  Registrars will charge a one-time reservation fee, and although this amount varies by registrar, it is usually in the range of $200-$350.  In general, the information needed for a blocking application includes:

  • the name of the registered trademark;
  • the registration number and date;
  • the country in which the trademark is registered;
  • the class(es) of goods and services covered by the registration; and
  • information regarding ownership of the trademark.

After the Sunrise period, the registration of the .XXX domain names opens up to those in the adult entertainment industry as a whole, without any trademark ownership requirements.  This is the Landrush period, and it runs from November 8—November 25.

Businesses that do not have registered trademarks will also be able to register .XXX domain names during the General Availability period, which opens on December 6, if the names have not already been registered during the Sunrise and Landrush periods.  While the domains registered during the General Availability period do not need to resolve to an actual website, and therefore may provide another way of ensuring your brands are prevented from being used as part of a .XXX domain name, the General Availability period is on a first come, first served basis, so there is a risk that many domain names will already be taken prior to this time.

As you can see, if trademark owners do not seek protection under the available blocking reservations during the Sunrise B period, there is a risk that their brands could be registered by cybersquatters or entities in the adult entertainment industry during the Landrush or General Availability periods.  Although there will be a dispute resolution process available, it is a much simpler, cost-effective process to block such registrations from ever taking place.  Being proactive will help to ensure that your brands are not used for sites with adult entertainment content, as well as ensuring they are not held for ransom at a premium price.

Beyond .XXX

The launch of .XXX also provides a good opportunity to think beyond the .XXX Top-Level Domain and consider a broader strategy of preventative measures concerning other domain name extensions.  It should be a routine part of your branding strategy to defensively register domain names for at least your primary trademarks (such as company names and product and service names) with extensions such as .com, .net, .org, .info and .biz.  This can be a standard step in the process every time you adopt a new trademark.  Even if you have no intent to actively use such domains (you can have them resolve to your main website), registering them can prevent possible misuse of your trademarks by others.  This is a very cost-effective way to avoid future disputes over the domain names or any content that may be posted on such websites.