Protecting Your Brand in the .XXX Age: 8 Things To Know (by October 28)

“But what if your company is not in the adult entertainment industry? Then your company probably does not want its trademark standing in front of the .XXX designation, particularly if that directs a user to a pornographic site.”

The clock is ticking for brand owners who want to block the use of their trademark in .XXX domain names: “Sunrise B,” the period during which companies can do that, ends on October 28, 2011. Eight things you need to know about getting that done, from lawyers and law firms on JD Supra:

1. In order to be protected, a trade-mark must be one that achieved registration prior to September 1, 2011 and which is in full force and effect at the time of application for reservation as a blocked domain. From The Launch of the .xxx Top Level Domain Name – Protecting your Brand’s Reputation by Lawson Lundell LLP

2. Under the provisions of Sunrise B, state registrations, common law marks, and business names are not eligible for registration. Additionally, Sunrise B will only allow trademark owners to block their exact trademarks but not similar marks. From XXX Domains: Prevention is Better than the Cure by Sutherland Asbill & Brennan LLP

3. A successful Sunrise B brand-protection application will prevent anyone in the Land Rush and General periods from using the registered trademark as a .XXX domain. From YourTrademark.XXX – Trademark Owners Have Until Oct. 28, 2011 to Block Adult Entertainment Companies From Using Registered Trademarks by Fox Rothschild

4. [A] registration filing will need to be made with one of the approved .xxx registrars, such as GoDaddy.com and Network Solutions. It is estimated that the registrar’s fee for this filing will be in the $200-$400 range. From Protecting Your Trademarks In The New .xxx Domain Space by Armstrong Teasdale LLP

5. When a Sunrise B applicant is successful, the domain name will no longer be available for registration in the future, and it will “resolve” (redirect traffic) to a plain page which will indicate that the domain is reserved from use through ICM’s rights protection program. From Sunrise period to “.XXX empt” by Heenan Blaikie LLP

6. This Sunrise period allows trademark owners to prevent registration of the .xxx domain prior to the time when the .xxx registry becomes generally open to the public. From Deadline to Block Registration of Your Trademark in a .xxx Domain Name by Wendel, Rosen, Black & Dean LLP

7. After October 28, 2011, trademark owners can prevent third parties from incorporating their trademarks into .xxx TLD registrations by obtaining defensive .xxx TLD registrations. However, defensive TLD registrations must be renewed and maintained, unlike the one-time opt out Sunrise B provision. From Block Your Trademarks From Being Registered in the New .xxx Top-Level Domain by Luce Forward

8. [T]rademark owners should use Sunrise B to block exact trademarks, since – in addition to the risk that an infringer will jump in before the trademark owner gets a chance, causing needless aggravation and legal expense – General Registration will be more costly and require more attention due to the need for domain renewals. From Protecting Your Trademarks in the World of .XXX Domain Names by Reed Smith

—-

See Also:

—-

Related Commentary and Analysis

—-

Follow Intellectual Property Law Updates on: LinkedIn | Twitter | Facebook | JD Supra