Planning for the .XXX Domain Names

In April 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) authorized the creation of a new .xxx sponsored top-level domain (sTLD) for the adult entertainment industry. Initially adult entertainment companies seeking to register their trademarks using the new .xxx sTLDs will need to show some prior rights in a trademark before they can do so.

Later, however, such limitations will fall away and any available term may be registered as a .xxx domain name.

Specifically, beginning on September 7, 2011, owners of trademark registrations can prevent their marks from being registered as .xxx domain names through a mechanism referred to as “Sunrise B.” Under the Sunrise B process, parties who own a valid trademark registration in a jurisdiction where the party has engaged in substantial bona fide commercial activities may block the registration of a domain name of that trademark’s same name with a .xxx domain name. The cost to do so will be approximately US$200 to US$300. Once blocked, the .xxx domain name in question will not be available for registration for a period of 10 years.

The blocked .xxx domain name will be “reserved” from registration and will take readers to a standard page that indicates that the domain name has been blocked from use. In addition, the WHOIS report for this domain name will only identify the ICM Registry, the authorized registry for .xxx, as the registrant.

ICM Registry has stated that it is only offering trademark owners this one opportunity to block the registration of .xxx domain names that correspond with their registered trademarks. After that, trademark owners would need to bring an infringement, dilution, cybersquatting, or similar claim to try to stop use of a .xxx domain name that incorporates their marks.

Sunrise B is scheduled to begin on September 7, 2011, and will run for 30 days, closing on October 7, 2011.

For those in the adult entertainment industry there will also be a mechanism known as “Sunrise A” during the same time period where members of their sponsored community may register .xxx domain names that directly correspond with their registered trademarks or with their preexisting second-level domain names in an existing top-level domain (e.g., .com, .net), as long as the latter existing top-level domain was registered prior to February 2010. Sunrise A, like Sunrise B, will close on October 7, 2011.

Thereafter, beginning on December 6, 2011 .xxx domain names will become generally available to any party on a first-come, first-served basis. Accordingly, starting on that date, anyone can register a .xxx domain name.

The Trademark Company