IP: Trademark liability and the .xxx domain

A designated opt-out period helps trademark owners safeguard their rights.

This September marked the launch of the new web domain .xxx, created to consolidate and filter adult entertainment content online. While the domain is intended for use by the adult entertainment industry only, trademark owners operating in other areas should be aware of the potential risk that their mark may be registered in .xxx without their knowledge or consent. This means that a person seeking www.yourtrademark might end up at an adult site www.yourtrademark.xxx, resulting in potential extortion and negative repercussions for the brand if the trademark owner does not take necessary preventive steps.

Trademark owners can and should safeguard their rights. ICM Registry, the firm behind .xxx, allows trademark owners to opt out of the .xxx domain, essentially blocking registration of their brands as .xxx, thereby preventing use of the brand as a .xxx web address. The ability to opt out is offered to all trademark owners for a one-time fee but will only be available prior to the .xxx launch, otherwise known as the “Sunrise Period.”

The Sunrise Period began Sept. 7 and ends Oct. 28. During these few weeks, trademark owners can opt in or opt out of .xxx name registrations. The Sunrise Period consists of two separate groups working within the same 52-day period. Sunrise A is the opt-in period for all trademark owners in the adult industry looking to reserve domains. Sunrise B is the opt-out period for all other trademark owners seeking to block their brands from registration as an .xxx domain name.

Eligibility for Sunrise B requires:

● The ownership of a current trademark registration of national effect

● That trademark must be issued prior to the time the owner applies to opt out

● Ownership must occur in a jurisdiction where the applicant conducts substantial bona fide business in connection with the trademark

● The applicant must pay the one-time fee set by the individual registrars, with fees ranging from $225 to $300.

It is not possible for a party that does not own a trademark registration to opt out during the Sunrise B period. Further, it is not possible for that party to ever register a .xxx domain for defensive purposes unless that trademark owner can prove that it is a member of the adult entertainment industry.

It is likely that a service will be offered in 2012 for blocking .xxx domain names based on trademark registrations that issue after the Sunrise B period. It may be beneficial to file trademark applications as quickly as possible to take advantage of the anticipated blocking process. The cost of this process has not been announced, though it is expected to exceed the cost of Sunrise B opt outs. 

Potential Sunrise applicants should speak with their Internet Corporation for Assigned Names and Numbers (ICANN) registrar or domain name management service provider to learn more about the cost, timing, and details of the opt-out process.

For trademark owners looking to protect their brand from .xxx registration, the Sunrise B opt-out process is highly recommended. Additional information is available at www.xxxempt.com. Those desiring an .xxx domain can review the requirements and deadlines at www.icmregistrry.com

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Joe Johnson

Joe Johnson is a partner in Lathrop & Gage’s Springfield, Mo., office. He is a licensed patent attorney and prosecutes patent and trademark applications in...

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