The new .XXX generic top-level domain namespace has been designed specifically for the adult industry. Registered trademark owners who want to protect their marks from being used as a .XXX top-level domain will have until October 28, 2011 to file a request to block their mark from being registered as a .XXX domain name. In order to qualify for the limited opt-out period or so-called “Sunrise B Period,” the registered trademark must be a trademark or service mark registration of national or regional international effect issued prior to September 1, 2011. Unregistered trademarks or service marks (including common law), U.S. state trademarks or service marks, and trademarks or service marks for which an application or registration has lapsed, been withdrawn, revoked, canceled, or otherwise is no longer in full force and effect cannot be the basis for such a request.
A successful application to block a domain name by a qualified registered trademark owner under the Sunrise B Period, and not subject to a competing application from an adult industry applicant under a concurrent Sunrise A Period, will result in the domain name being removed from the pool of domain names available for registration. The domain name will resolve to a standard informational page indicating the status of the domain name as “not available for registration” or similar and the corresponding WHOIS information will simply list standard registry information rather than information about the Sunrise B applicant.
In the event both Sunrise A (adult industry) and Sunrise B (non-adult industry) applicants apply to reserve the same domain name, the parties will be notified, giving the adult industry applicant the opportunity to withdraw the application for the domain name to avoid any potential dispute.
Once the Sunrise A and B Periods have passed and the general availability phase is open, registrations will be run on a first-come, first-served basis, with no pre-emptive rights protection in place. Although there will be post-launch rights protection mechanisms available, trademark owners may find the pre-emptive blocking approach provided with the Sunrise B Period to be more cost effective.
The cost charged by participating registrars for a Sunrise B application appears to range from $200-$400 per mark. Further details on the registration process being managed by ICM Registry can be found at www.icmregistry.com.
Trademark owners considering filing blocking requests with a participating registrar during the Sunrise B Period for their federally registered marks should act immediately.