Godfrey & Kahn Updates
August 16, 2011
by Jennifer R. Racine
Last spring, the Internet Corporation for Assigned Names and Numbers (ICANN) approved the new top-level domain ".xxx" for use in connection with websites featuring adult content. General availability of the new domains will begin on December 6, 2011.
How Could Launch of the .XXX Domain Affect Your Trademark Rights?
If you own a registered trademark, chances are you would not like to see the domain "yourtrademark.xxx" used as the address for an adult content website. Among other things, the use could have adverse effects on your trademark rights and the goodwill associated with your business. While it may be possible to stop the use through arbitration or litigation, those processes can be time-consuming and expensive. Moreover, it would be difficult to repair the damage done to your trademark during the time the domain was in use. There also may be circumstances under which you could not stop use of the .xxx domain once it was adopted. For example, proof of "bad faith" is required under both the federal Anti-Cybersquatting Consumer Protection Act and the ICANN arbitration policies for domain name disputes. An adult content provider may not know about your trademark when selecting its new domain name, or may have had other good faith reasons for selecting it. In those cases, the bad faith element would be difficult to prove and the domain could continue in use.
How Can You Protect Your Trademarks from Use in a .XXX Domain?
Fortunately, launch of the new .xxx domains includes a pre-registration program known as "Sunrise B," through which owners of federally registered trademarks can apply to prevent those trademarks from being used in .xxx domains. If an application is approved, the domain including the subject trademark will be added to the .xxx registry's reserved names list and blocked from registration and use. For example, if your federally registered trademark is ABC GHI, you could apply to have "abcghi.xxx" and "abc-ghi.xxx" added to the reserved names list. If added, those domains will not be available for others to register. The reserved domains will resolve to a standard webpage telling users that the name has been reserved.
Trademark owners can submit applications for inclusion on the reserved names list only between September 7, 2011 and October 28, 2011. Applicants must have a federal trademark registration, or an equivalent foreign registration, as of September 1, 2011. Pending federal applications, federal registrations on the supplemental register, common law or unregistered trademarks and state trademark registrations will not meet the eligibility requirements. Provided that no conflicting applications are received under the "Sunrise A" program (which allows members of the adult entertainment industry to pre-register their existing trademarks as .xxx domains), applications meeting the eligibility requirements will be added to the reserved names list.
Applications can be made through approved domain name registrars, such as GoDaddy.com and Network Solutions, which set their own prices for application processing. We can also assist you with the application process. For more information, you can visit http://www.icmregistry.com/sunrise-b.php or contact Jennifer Racine at (608) 284-2243 or email@example.com.