August 5, 2011
The Internet will soon see its own “red light district.” Unless you act soon, your trademark may find a home there. Specifically, the adult entertainment industry is slated to receive its own top-level domain, .xxx. Owners of registered trademarks should be aware that there is a limited time period to submit an application to block third parties from obtaining corresponding .xxx domains.
Internet top-level domains are the extensions (e.g., “.com” and “.net”) found in website and e-mail addresses. In many cases, unscrupulous registrants have obtained domain names that correspond to well-known trademarks. Many times, these registrants intend either to extort the trademark owner into purchasing the domain, or to misdirect Internet users who may be searching for information about the trademarked product.
Existing domain dispute procedures allow trademark owners to contest such registrations and to take control of the domain name in question. Such domain disputes, however, can take considerable time and money to resolve. Moreover, many companies will not want their trademarks registered to the .xxx domain, even if they later take control of the domain in question.
Recognizing the concerns of trademark owners, the .xxx registry is allowing owners of registered trademarks a limited period to apply to block registrations of .xxx domain names that correspond to their trademarks. Only those who own a valid national trademark registration that was issued before September 1, 2011, may apply to block their brands from registration. This so-called “sunrise” period will run from September 7 through October 28, 2011. During this time, members of the adult industry can also apply to register .xxx domain names that correspond to their registered trademarks or their existing domain names in other top-level extensions.
Under the applicable procedure, the trademark owner (e.g., the owner of “yourbrand”) will file an application, including a fee currently estimated at up to $300, with a participating domain name registrar. Upon successful application, the corresponding .xxx domain name (“yourbrand.xxx”) will be blocked for a period of ten years. Anyone who attempts to access the .xxx domain via the Internet will be presented with a generic “reserved” page, and the domain registrar will be listed as the registered owner of the domain.
The blocking procedure includes several exceptions. If an adult entertainment business already has filed a qualified application for the same domain name, the domain name will not be blocked. Also, trademark owners cannot apply to block misspellings or variations of their registered mark, pending trademark applications, other domain name registrations, or common law trademarks. U.S. trademark holders cannot block trademarks registered on the Supplemental Register.
As stated above, the sunrise period will run only through October 28. Once the sunrise period closes, another period opens—the “landrush” period, November 8 through November 25, 2011— during which time members of the adult entertainment industry can apply to register a domain name without the need to demonstrate prior ownership in a trademark. Beginning on December 6, 2011, .xxx domain names will become generally available to any party on a first-come, first-served basis.
Thereafter, if it is discovered that a .xxx domain name is registered and being used in bad faith, trademark owners still have powerful tools to address the issue. These include the procedures specified in the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and litigation via the courts. The .xxx registry also anticipates offering a number of post-registration mechanisms for protection of trademark rights, but the specifics for these mechanisms have yet to be fully released.
Trademark owners, especially those whose marks have been the target of abusive registrations in the past and those who believe that their marks may lend themselves to adult connotations, should strongly consider the submission of a blocking application. If you would like assistance in filing a blocking application, or if you have further questions regarding the .xxx registry, please contact Fitch Even attorney Selena M. Spritz, the author of this alert, or Fitch Even partner Joseph T. Nabor.