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  • © The Regents of the University of California, 2010-2017. Unauthorized use and/or duplication of this material without express and written permission from this blog’s author and/or owner is strictly prohibited.

.XXX Marks the Spot

.XXX is coming soon to a domain name on your computer! As the name implies, the .XXX registry will be the first to target the adult entertainment industry. Trademark owners who are not a part of that industry — including attorneys and their clients — need to act fast to protect their marks from being used with a .XXX web address.

As part of its plan to add many more domain names, the Internet Corporation for Assigned Names and Numbers (ICANN)  has approved .XXX as a sponsored top-level domain. Of course there will be a chance for those in the adult entertainment industry — or those looking to get in, e.g., always provocative PETA is planning a .XXX site — to snatch up domain names.  But more important for most businesses, ICANN has also provided a way for those not in the adult entertainment industry to protect their brand from being connected with a .XXX web address.

As Morrison & Foerster explains in their Client Alert (.pdf), there are two concurrent procedures for reserving .XXX domain names:

  • Sunrise A allows members of the adult entertainment industry to apply to register .XXX domain names, and
  • Sunrise B allows trademark owners outside the adult entertainment industry to attempt to reserve or “block” their marks from use as .XXX domain names.

The timing for both procedures is the same: You must act before October 28, 2011.

Opting out under Sunrise B will mean that there will be no website or email for the protected BRAND.XXX. If someone were to go there, they would see a page indicating only that the string is blocked from use and will be blocked from registration. Business Insider explains that brand owners won’t actually own the .XXX registration, but will have bought the right to have their term excluded from registration. The cost for this blocking is about $200 to $350 per trademark and lasts at least 10 years.
 
There are limitations to Sunrise B. As Corporate Counsel warns, the Sunrise B program only applies to the exact trademark, “not variations or close misspellings.”
 
If brand owners miss the end of the Sunrise B period on October 28th, there will be a General Availability period, beginning December 6th, during which .XXX domain names will be allocated to applicants on a first come, first served basis. This will allow personal domain names, company domain names, product domain names, etc., that didn’t qualify under Sunrise B (e.g., because their trademark was not registered) to take advantage of defensive .XXX registrations.
 
So shake off your summer slumber and get focused on your brand protection strategy. As the Business Insider suggests: Develop a Sunrise B strategy quickly and assemble trademark registrations for the marks you want to protect.
 
On domain names and trademark issues generally, turn to CEB’s Internet Law and Practice in California, chap 3.

© The Regents of the University of California, 2011. Unauthorized use and/or duplication of this material without express and written permission from this blog’s author and/or owner is strictly prohibited.

2 Responses

  1. Awesome post.

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