Earlier this year, the Internet Corporation for Assigned Names and Numbers (ICANN) agreed to establish .xxx as a new top-level domain (TLD) for use exclusively by members of the adult entertainment industry. The new TLD will be administered by a registry called ICM Registry.

In response to the concerns of brand owners, ICM Registry created a process by which those outside the adult entertainment industry could block their registered trademarks from being registered to another party in the adult entertainment industry. This process is available only during a limited window of time dubbed the “Sunrise B” period, which is now open, and which closes on October 28, 2011. After that date there will no longer be a comparable process for blocking a trademark from the .xxx TLD.

ICM Registry has appointed a number of registrars that may sell domain names and administer the Sunrise B process. A list of these registrars can be found at http://www.icmregistry.com/registrars/. Fees for the blocking service vary by registrar, but range between $200 and $350 per trademark, so interested parties may want to compare rates before selecting a registrar. For that one-time, non-refundable fee, the registered trademark will be blocked for at least the 10-year period during which ICM Registry is permitted to administer the new TLD.

Those who are considering taking advantage of the Sunrise B blocking should keep in mind the following features of the Sunrise B process:

  • Trademark owners and licensees are eligible to apply under the Sunset B process. Licensees must sign a declaration documenting their licensee status.
  • Only U.S and foreign trademarks and service marks that were registered as of September 1, 2011, are eligible for blocking through the process. The following items are not eligible: trademarks registered on the U.S. Supplemental Register, trademarks registered in individual U.S. states, trademarks that are as yet the subject only of an application, other unregistered trademarks, company names that are not registered trademarks and domain names that are not registered trademarks. In some of these cases, one of the dispute resolution processes described below may provide a remedy.
  • Only the exact, entire text string contained in the registered trademark is eligible for blocking. Abbreviations, variants and misspellings are not eligible. Again, one of the dispute resolution remedies may be available in some cases.
  • Names that are “reserved” under the Sunrise B process will resolve to a standard page that indicates that the name is not available for registration in the adult entertainment industry TLD.
  • A “Sunrise A” process is running concurrently with the Sunrise B process. Under the Sunrise A process, members of the adult entertainment industry may reserve their registered trademarks, and existing second-level domain names from other TLDs. In the event there are competing applications under the Sunrise A and Sunrise B processes, the Sunrise A application will prevail, but the Sunrise A applicant will be placed on notice of the trademark registration of the Sunrise B applicant, which could be significant in a subsequent dispute resolution process.
  • Only members of the adult entertainment industry will be eligible to register domain names for use in the .xxx TLD. ICM Registry will have a process for verifying eligibility of the applicant and a process for resolving disputes concerning such eligibility. Regular registration fees have yet to be established, but Sunrise A registration fees are in the $200 to $250 per year range, and news reports suggest that regular registration fees will likely be in the same range. Both the eligibility requirements and the pricing model for registrations should tend to reduce classic cybersquatting activity in the domain. On the other hand, the requirements make it impossible for those outside the adult entertainment industry to register a domain defensively, and the pricing model makes that approach expensive even for those who meet the requirements.
  • ICM Registry has adopted ICANN’s Uniform Dispute Resolution Policy (UDRP) for resolving domain name disputes, and will also have a Rapid Evaluation Service (RES) to provide a prompt takedown in response to complaints concerning well-known trademarks. The RES process would not prejudice the ability to use the UDRP process or other dispute resolution processes. In some cases, the U.S. Anticybersquatting Protection Act is also a potential remedy for use of one’s trademark in the .xxx TLD. Thus, after-the-fact remedies will be available in some cases, though their cost will be far greater than the cost of participating in the Sunrise B process.

The Sunrise B process is designed to be straightforward, and can be implemented directly through any of the designated registrars without the assistance of counsel. However, trademark owners and licensees who would like assistance in evaluating the costs and benefits of the Sunrise B process as applied to their own portfolio of trademark registrations may wish to consult counsel experienced in trademarks and domain names.