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How To Protect Your Trademark From Becoming “X-Rated”

Intellectual Property Law Update Nicole M. Murray, Hillary J. Wucherer

The new .XXX sponsored Top Level Domain ("sTLD") will launch in late 2011. If you own or license a registered trademark, you will have from September 7, 2011 through October 28, 2011 (the "Sunrise Period") to file a request to permanently block others from obtaining a .XXX domain that exactly corresponds to your registered trademark (with limited accommodations for special character transcription).

To prevent a third party from registering a domain with your trademark in the .XXX sTLD, you must file a request for each domain you want to block. You can request domains that match your trademark from three characters to 63 characters in length, but special characters in the trademark (such as, @, !, §, %, ^, . ,© or &) must be deleted, transcribed or replaced with a hyphen (for example, the trademark YOUR & MARK can become yourmark.xxx, yourandmark.xxx or your-mark.xxx). You can file multiple requests for different domain variations of the same trademark (for example, yourmark.xxx, yourandmark.xxx and your-mark.xxx). However, each domain variation must be submitted and paid for through a separate request. Requests must be submitted to registrars that have been approved to sell and manage .XXX domains, and each registrar sets its own fee (expected to be around $300 per request). A request must include:

  • The domain that you seek to block;

  • The corresponding trademark;
  • The country(ies) in which the corresponding trademark is registered;
  • The trademark registration number(s);
  • The filing date for each trademark application that resulted in the referenced registration and the issue date for the referenced registration;
  • The class(es) for which the trademark is registered; and
  • The status of the applicant (e.g., the owner, licensee or assignee of the registered trademark).

Requests cannot be based on (1) pending trademark applications; (2) lapsed, revoked, canceled or abandoned registrations; (3) unregistered trademarks; (4) U.S. state trademark registrations; (5) international applications or registrations (unless these are based on national trademark registrations or have resulted in extensions of protection); or (6) U.S. Supplemental Register registrations.

Not all domains can be blocked through this process. Members of the adult entertainment industry (the sponsored community) that own (1) a substantially equivalent registered trademark for goods or services related to adult entertainment; or (2) an active and equivalent domain name issued prior to February 1, 2010 can reserve .XXX domains for use during this same Sunrise Period. In the event of a conflict between a trademark rights holder and a member of the adult entertainment industry, the domain will be awarded to the adult entertainment industry member.

Assuming no competing qualified application for the same domain name was filed by a member of the adult entertainment industry, the requested domain name will be permanently removed from the list of available .XXX domains and will redirect to a standard informational page, subject to the registry's right to periodically verify that the registered trademark has not been abandoned, invalidated, canceled or otherwise terminated. Once the blocking process is complete, your name will not be connected to the blocked domain. The "WhoIs" owner information page will list ICM Registry LLC (the .XXX sTLD operator) as the owner of all blocked domains.

Although filing a request during the Sunrise Period is the most efficient way to prevent unintended use of your trademark in connection with the .XXX domain, there will be post-Sunrise Period options for resolving domain disputes. The Internet Corporation for Assigned Names and Numbers' ("ICANN") existing Uniform Domain-Name Dispute-Resolution Policy will also apply to the .XXX sTLD. In addition, a new procedure known as the Rapid Evaluation Service ("RES"), unique to the .XXX sTLD, will also be implemented. Though final details have not been released, the intent is to provide a prompt remedy for situations involving clear abuse of (1) well-known distinctive marks of "significant commercial value;" or (2) personal or professional names of individuals. If you miss the Sunrise Period or want to block others from using a .XXX domain corresponding to an unregistered trademark, you can defensively register .XXX domains once the general availability period opens in December 2011. However, the annual registration fees for .XXX domains are expected to be significantly higher than the annual fees for domains in existing TLDs like .com, .net, etc. As a result, we recommend filing a Sunrise Period request where possible.

If you have questions about the .XXX Sunrise Period or how the opening of the .XXX sTLD could affect your intellectual property rights, please contact Nicole Murray at (312) 715-5241 / nicole.murray@quarles.com, Hillary Wucherer at (414) 277-5723 / hillary.wucherer@quarles.com or your Quarles & Brady attorney.