How to Prevent Your Trademark from Going .XXX

The Internet Committee for Assigned Names and Numbers (ICANN) has approved the launch of the new .XXX top-level domain name (“TLD”), targeted to serve the needs of the adult entertainment industry. As we've seen in the past, the launch of new TLDs may give cybersquatters the opportunity to register domain names that incorporate famous marks to later profit from selling them to their rightful owners. The risk of brand damage caused by such cybersquatting activities is enhanced in this case by the fact that the .XXX TLDs are, by definition, associated with sexually-oriented content. Sensitive to the issue, the registry behind the .XXX TLD is giving trademark owners outside the adult industry the opportunity to preemptively block their marks from being registered within a .XXX web address.

Starting on September 7, 2011, shortly before the launch of the .XXX TLDs, trademark owners will have a 30-day “Sunrise Period” to opt-in or opt-out of the .XXX registry. In order to block a trademark from being used as a .XXX web address, the interested party must own a trademark registration granted before September 1, 2011. The opt-out feature will only be offered during the 30-day pre-launch period and it will be available upon payment of a one-time fee estimated to range from $200 to $300. Only exact matches of a registered trademark may be entered during the Sunrise Period for either opt-in or opt-out, which means that abbreviations, hyphenated uses, acronyms, typos or close variations of a trademark may not be blocked.

While trademark owners will still be able to attempt to recover .XXX domain names that make unauthorized use of their trademarks by using existing anti-cybersquatting mechanisms, such as UDRP complaints, the preemptive opt-out feature will likely be less costly and more efficient. Trademark owners will also have a chance to continue to block their trademarks after the Sunrise Period, but opt-out costs are expected to be higher than those to be offered during the pre-launch period.

We, therefore, encourage our clients to review their trademark portfolios and consider applying to block their main brands from registration within the .XXX registry.


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