By Mark A. Steiner
The Internet Corporation for Assigned Names and Numbers (ICANN) is
set to launch the new .XXX (dot-triple X) top-level domain (TLD)
extension this fall. The intended users are those in the adult
entertainment industry with websites that are sexually oriented, but not
illegal or fraudulent. The domain names will be registered via ICM
Use of the new domain extension is voluntary and is intended to
better-regulate online sexual content and limit its exposure to adult
audiences. Adoption of the .XXX TLD was opposed by some both outside of
and within the adult entertainment industry. Those outside the adult
entertainment industry posited that issuing domain registrations with
.XXX extensions further legitimizes the adult entertainment industry and
provides a new access point for sexual content. Within the adult
entertainment industry, some contended that the .XXX TLD could be a
"scarlet letter" of sorts where rankings of adult websites on popular
search engines would be low or nonexistent. Their concern is that the
new extension could essentially become a keyword that is readily
identifiable, and therefore easily blocked altogether. For the
trademark owner, release of the new extension may be problematic because
it provides an opportunity for disreputable third parties to hold a
mark hostage by registering it with the new .XXX extension.
The new .XXX registration process will consist initially of two
phases: "Sunrise A" and "Sunrise B," both of which will run from
September 7, 2011 to October 28, 2011.
Sunrise A Period
The Sunrise A period is designed specifically for the adult
entertainment industry, as it will allow trademark owners to register
their mark(s) with a .XXX domain extension. The option to register is
voluntary, and the adult entertainment trademark owner's new site will
be associated with its existing registered sites.
Sunrise B Period
Sunrise B is the designated period for non-adult entertainment
trademark owners to register their mark with the .XXX extension. This
will allow the trademark owner to block future registrations of its mark
with the .XXX extension by any third party.
1. Block the .XXX Domain for the Trademark During Sunrise B Period
Those who own registered trademarks may want to be proactive in
registering the .XXX domain during the Sunrise B period to block others
from registering the mark with the .XXX TLD. A benefit of defensively
registering the .XXX TLD is to prevent unwanted affiliation or
sponsorship between a "wholesome" or otherwise innocuous brand and the
adult entertainment industry. In addition, trademark owners would be
able to block their marks from third parties who attempt to register
their marks with the .XXX extension for undesirable reasons.
Accordingly, prudent trademark owners can take the preventive measure of
registering the .XXX TLD for their marks during the Sunrise B period to
block others. In this way, trademark owners may avoid incurring
potentially great expense to undo any tarnishment to their brands by
third parties. A one-time fee expected to be between $200 and $300 will
be required, and this "defensive registration" will last for 10 years.
2. Register Early During the General Availability Period
Trademark owners who did not or could not protect their trademark during
the Sunrise B period either because they missed the opportunity to
block the .XXX domain for their registered trademark or because their
mark is not the subject of a trademark registration may wish to act
promptly during the General Availability period commencing December 6, 2011, during which .XXX domains will be registered on a first-come, first-served basis.
3. Monitor .XXX Domain Registrations
Trademark owners should also consider checking with their watch service
providers to determine whether the service provider will monitor .XXX
domain name registrations. Failure to defensively register and monitor
the .XXX domain name registrations could allow a third party acting in
bad faith to register a mark with .XXX.
Proactive trademark owners are likely to be well-served in protecting
their valuable brands if they consider follow the foregoing steps. In
taking control of registering the .XXX TLD associated with their marks,
they can potentially avoid substantial expenditures to undo harm that
others may cause.
If you have any questions about this Alert, please contact Mark A. Steiner, any member of the Intellectual Property Practice Group or the attorney in the firm with whom you are regularly in contact.
Note: Thanks to Daphne Simonson-Minckler, of Golden Gate University Law School, for her assistance in writing this Alert.
Disclaimer: This Alert has been prepared
and published for informational purposes only and is not offered, or
should be construed, as legal advice. For more information, please see
the firm's full disclaimer.
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