New .XXX Top-Level Domain Raises Concerns for Trademark Owners

August 24, 2011

ICANN, the Internet Corporation for Assigned Names and Numbers, is responsible for managing the hundreds of top-level domains (TLDs) on the Internet, including well-known TLDs such as .com, .gov, and .edu.  In early 2011, ICANN approved the new .xxx domain, intended to serve as a voluntary TLD for pornographic sites on the Internet. First proposed over ten years ago, the .xxx TLD has faced serious opposition from politicians and advocacy groups, as well as from trademark owners who are concerned about possible misuse of their trademark.  To address these concerns the Florida-based company that will oversee the domain, ICM Registry, has established a procedure for blocking domains related to legitimate trademarks. Domain Name Registration During an initial 52-day “Sunrise” period (September 7, 2011 through October 28, 2011), intellectual property holders with verifiable trademark rights can reserve domain names to ensure that those names are not registered as domain names by others. Each domain name registration will typically cost between $200 and $300.  Successfully blocked domain names will resolve to a standard information page indicating that the domain name is not available for registration. At the end of the Sunrise period others will be prevented from registering the reserved domain name, but only if no member of the “adult Sponsored Community” has applied for the domain name.  If a member of the “adult Sponsored Community” does apply for the domain name, that member will be given priority in the domain name and the trademark holder will be required to seek other methods of protecting its mark. During a later period of “General Availability” beginning on December 6, 2011, all remaining .xxx domain names will be allocated on a first come, first served basis. Domain Name Disputes Despite ICM Registry’s procedure, many trademark holders will not register a domain name, and most trademark holders will find it too expensive to register all confusingly similar variants of their mark.  Accordingly, there are several mechanisms by which trademark owners can protect their rights, including the Uniform Dispute Resolution Policy (UDRP) and ICM Registry’s newly-formed Rapid Evaluation Service (RES), which is incorporated directly into registrant’s agreement with ICM and was designed specifically for resolution of .xxx disputes.  RES is largely modeled after the UDRP process but is designed to lead to a resolution in 2-5 days and eliminate some of the of the uncertainty found in current UDRP case law. We will be happy to register your trademark during either the Sunrise Period or during the General Availability period.  Alternatively, you can apply to register your mark at one of these registrars. The Take Home Message Regardless of whether you decide to reserve your trademark’s domain name, observation of the new .xxx TLD should be part of your brand monitoring efforts.