Your Brand in the .XXX Age: How to Block Use of Trademarks by Adult Sites

ICM Registry, the company tapped by ICANN to manage the .XXX domain registry, will start its 30-day “Sunrise Period” for reserving trademarks in the .XXX domain on September 7. This means businesses that want to block adult entertainment providers from using their trademarks need to act quickly. Here’s what you need to know:

Trademark Alert: .XXXtra Concerns for Trademark Owners: The New .XXX Domain Name (Fenwick & West):

“The newest domain extension—.xxx—is about to make its debut, much to the chagrin of trademark owners who wince at the prospect of use of their trademark as a domain in an online space purportedly reserved for the adult entertainment industry. If you are concerned, you will want to apply to block .xxx domain names that correspond with your marks. You must act before October 28, 2011.” Read more»

Protecting Trademark Owner Rights Under The New .XXX, Adult Entertainment Sponsored Top-Level Domain (Bryan Cave):

“A domain devoted to the adult entertainment industry, on the other hand, is perceived by many as more likely to result in ‘squatters’ of YourTrademark.xxx, and the content of such sites to have a much greater impact on the public perception of brands. If you are not among the Sponsored Community, how can you register your mark or otherwise ensure that a domain name incorporating your mark is not registered, thereby potentially tarnishing your mark through the site’s content?” Read more»

Deadlines And Details To Keep Trademarked Domains Away From The Adult Entertainment Industry (Len Brignac / King, Krebs & Jurgens, PLLC):

“Despite that the decision helps internet users distinguish the adult industry domain from other domains such as .com, .org, and .net, it may create an opportunity for any third party to register almost any domain name. … Business and trademark owners can take steps to protect their companies and brands from being registered to an .xxx domain. Failure to do so would put companies at risk of association with the online adult entertainment industry.” Read more»

Launch Of .XXX Top-Level Domain Requires Consideration And Planning For Brand Owners (Womble Carlyle Sandridge & Rice, PLLC):

“Given the proliferation of abusive domain name registrations in the existing global top-level domains (i.e., .com, .net, .org), ICM developed both proactive and reactive policies designed to protect brand owners, especially those outside of the Sponsored Community, from abuse by cybersquatters and other bad actors. This client alert provides an introduction and overview to ICM’s policies and explains how brand owners outside of the Sponsored Community may act to protect their brand names and trademarks from being reflected as domain names at .XXX.” Read more»

Important Deadline: Protecting Your Trademarks In (Or From) the Adult Entertainment Industry (Allen Matkins Leck Gamble Mallory & Natsis LLP):

“The Sunrise Period is also when those outside the adult entertainment industry can ‘opt-out’ or effectively block anyone else’s use of their trademarks in a .XXX domain name. The Sunrise Period as it applies to those outside the sponsored community is called Sunrise B. To block the use of a .XXX domain name, you must own a registered national or regional international trademark, and in general, the domain name that you attempt to block must be an exact match to the text of the registered trademark. Common law trademarks and state law trademarks are not sufficient for eligibility in Sunrise B.” Read more»

.XXX Domains (Baldwins | Intellectual Property):

“From a registration perspective, unless there is reason for a party to believe that their name or brand may be registered as a .xxx domain and used by a third party in order to display offensive material, this cyber development is unlikely to be an issue. It is however possible to ‘block’ your registered trade mark from being used in a .xxx domain name. The domain name will then resolve to a plain page which states that the domain name has been reserved.” Read more»

Protect Your Call Signs and Other Marks in the .xxx Domain (Davis Wright Tremaine LLP):

“While adult-oriented website operators may be interested in reserving spots in the .xxx top level domain (TLD), broadcasters may be just as eager to prevent their call signs and other marks from being used in that TLD where they may be associated with adult content. The ICM Registry, which will operate the .xxx domain, will allow those who own registered trademarks to reserve .xxx domain names to prevent others from using their marks in that domain.” Read more»

New Internet Domains Are Coming … What You Should Do (Davis Wright Tremaine LLP):

“Historically, only a limited number of general use TLDs have been used across the Web, the best known of which are .com, .net, and .org. Country code TLDs also exist, many of which also have been used generally without regard to the nationality of the registrant (e.g., .tv). … ICANN’s action will permit new applicants to propose almost any name or brand to become a top-level domain (e.g., .google or .pizza), and it will begin taking applications in January 2012. The sponsored .xxx domain will open this fall, but use of the .xxx TLD is limited to members of the ‘Sponsored Community’ who provide adult-oriented content and related services.” Read more»

Block Your Valuable Brand from .XXX (Bracewell & Giuliani LLP):

“… trademark owners may opt-out of .XXX by reserving names identical to their existing registered trademarks effectively barring any potential person or entity engaged in the adult entertainment community from registering a .XXX domain name for that particular mark. A registered trademark is required and submitting an application does not guarantee that your trademark will be blocked by the registry.” Read more»

Now is the time to keep your trademark away from the XXX top-level domain name (Charles Runyan):

“Trademark owners have a small window of opportunity to inexpensively make sure their valuable trademark or trade name remains unassociated with the adult entertainment industry.” Read more»

Trademark Registration Owners Have Limited Window to Block New Adult Content Oriented Top Level Domains (Miller & Martin PLLC):

“As long as no party owns a trademark registration identical to yours, then a proper application accompanied by the prescribed fee filed during this window should block your_trademark_registration.xxx from being made available for use by any party for the term advertised by the registrar.” Read more»

Important Notice for Trademark Owners: Protecting Rights In Light of New Adult-Entertainment Domains (Morrison & Foerster LLP):

“A successful Reservation Request will result in a ‘blocking’ domain name registration that is valid for 10 years. The trademark owner holding such a blocking domain will not be permitted to use the domain to access its own website or to link to another site. Rather, the blocked domain name will simply resolve to a standard informational page generated by the registrar.” Read more»

Inception of the Online Red Light District: ICANN to Launch Top-level Domain Extension This Fall (Duane Morris LLP):

“For the trademark owner, release of the new extension may be problematic because it provides an opportunity for disreputable third parties to hold a mark hostage by registering it with the new .XXX extension.” Read more»

Limited Window to Prevent Trademark Uses in Internet Red Light District Domains (.XXX) (McNees Wallace & Nurick LLC):

“The .xxx domain also represents the creation of new internet real estate and, because any string ending with .xxx can be purchased, the launch of .xxx represents an opportunity for domain squatters and trademark infringers. In other words, your trademark could become associated with a .xxx domain and website.” Read more»

Triple X: Not Just for the Adult Entertainment Industry (Duane Morris LLP):

“On September 7, 2011, ICM Registry LLC will begin accepting ‘Sunrise’ applications to block .XXX domain names, for brand owners in and outside of the adult entertainment industry (‘Sponsored Community’). Brand owners who are not in the Sponsored Community, but want to control their brand’s exposure in the online adult space may wish to consider the following…” Read more»

More on Top Level Domains 

Association of National Advertisers Challenges ICANN Authority to Establish New Top Level Domains (Reed Smith):

“In a letter to the Internet Corporation for Assigned Names and Numbers (‘ICANN’), the Association of National Advertisers (‘ANA’) detailed major flaws in the proposed ICANN program (Program) that would permit applicants to claim virtually any word, generic or branded, as Internet top-level domains (‘TLDs’) – the word to the right of the ‘dot’ in an Internet address, e.g., .com, .net, or .org. … Reed Smith, on behalf of ANA, is leading an initiative, with the support of other associations and organizations, to put ICANN on notice that the Program, which will permit up to 1,000 new TLDs, will be economically disastrous and is unjustified by the reports and experts relied upon by ICANN.” Read more»

New gTLDs to Appear as Early as 2012 (McNees Wallace & Nurick LLC):

“Applying for a new gTLD is not the same as registering a new domain (i.e. yourbrand.com) through an existing registrar. In addition to the $185,000 application fee, the successful applicant for a new gTLD will be required to maintain the registry for that gTLD, a responsibility that will cost at least $25,000 annually.” Read more»

Managing Your Brand Online – Historic Expansion of the Internet Domain Name System (Allen Matkins Leck Gamble Mallory & Natsis LLP):

“If your application for a gTLD is accepted, then you will run the registry for your gTLD and will be able to control the registration of all future second level domains for that gTLD. As an operator of a registry, you can sell second level domains to the public at any price, or not sell them at all, or perhaps make them available only to persons within your own organization.” Read more»

Get Ready for the Age of Dot.Anything on the Internet (Lowenstein Sandler PC):

“The new and controversial structure will allow strings from 3 to 63 characters to be registered as gTLDs thereby adding to the 22 existing top-level domains (i.e., .com, .edu, .org, .net). In addition, non-Latin characters in languages such as Chinese, Arabic and Japanese may also be registered. From .sports to .market to .yourbrand, the potential for new gTLDs is endless.” Read more»

ICANN Approves Process To Apply For Dot-Anything Domain Names (Bryan Cave):

“Given the application and technical costs, not all entities may choose to take advantage of these new gTLDs. Moreover, the ever-increasing importance of search engines has, to some extent, rendered domain names of less importance. On the other hand, these new gTLDs permit, for example, the creation of a space devoted to a trademark holder’s primary name or to a particular type of activity and may affect search engine results. Certainly, the potential for abuse necessitates that companies monitor the published list of new gTLDs in order to avoid the misappropriation of legal rights or the appropriation of business opportunities.” Read more»

WWW.What?: What the Impending New Domain Names Mean for Nonprofits (Venable LLP):

“Will another organization or group be able to register .charity or .nonprofit and refuse to let me have a domain name registration such as myname.nonprofit? It depends. The current draft Applicant Guidebook, which is still subject to amendment, provides that a registry may or may not have eligibility or use requirements. The agreement has to be negotiated with ICANN. As such, it is not possible to guarantee anything.” Read more»

.Brand: New TLDs Are Coming — Are You Ready? (Lane Powell PC – Intellectual Property Law & Litigation):

“Of course, conflicts will arise regarding appropriate ownership of .brand or .whateveryoucanthinkof TLDs. ICANN has put into place procedures that will be used to resolve issues of conflicting or confusing names. Third parties will be able to file both comments and objections to applications. ICANN will publish non-confidential portions of all applications on its website for a 60-day public comment period.” Read more»

See also: ICANN Domain Expansion: What You Need to Know to Protect Your Brand

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