Client Alerts
October 18, 2011

Adult entertainment industry may want your web site

Stites & Harbison, PLLC, Client Alert, October 18, 2011

by Stites & Harbison, PLLC

In March 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved .xxx, or “dot triple x”, as a sponsored top-level domain (TLD) for use by members of the adult entertainment industry.

On September 7, 2011, the “Sunrise A” stage opened, and registrars for the new .xxx domain name registry began accepting registrations for .xxx domain names from members within the sponsored adult community. Members of the adult entertainment industry were given a “grandfather right” to register as .xxx domain names the trademarks in which they own rights and the names they previously owned in other TLDs, such as .com or .net.

Also on September 7, the “Sunrise B” stage opened, and registrars began accepting requests by trademark owners who are not members of the adult entertainment industry to reserve or block the registration of .xxx names that include their registered trademarks. Between now and October 28, brand owners who hold a registered trademark may opt out of .xxx and prevent third parties from using their marks in .xxx domain names. To take advantage of the Sunrise B period option to block a .xxx domain name, an interested trademark owner must have obtained a registration for its mark prior to September 1, 2011.

Registered marks that cannot be reserved or blocked are marks that contain the text “.xxx”, marks that are the subject of currently pending applications, and marks in which the entire text has been disclaimed. Also ineligible for registration are marks which are registered on the United States Supplemental Register and marks which are the subject of a “dead” registration.

Eligible trademark owners who wish to block a .xxx domain name during the Sunrise B period will pay a non-refundable one-time fee of approximately $300 to submit a reservation request. All granted reservations will be permanent, subject to changes in the registry agreement and to the registry’s periodic confirmation that the relevant trademark is still registered.

Following this “Sunrise” period, from November 8 through November 25, 2011, members of the online adult entertainment industry who did not meet the qualifications to register during the Sunrise A period will be able to register .xxx domain names in what is known as the “Landrush” stage. The “General Availability” period opens on December 6, and anyone will be permitted to register a .xxx domain name. If brand owners take no action to block the registration of a .xxx that contains their trademark, the .xxx equivalent of their domain name will be available to anyone to purchase on a first-come, first-served basis beginning December 6, 2011. During the General Availability period, trademark owners will be able to obtain non-resolving registrations of domain names that contain common law trademarks, typographical errors of their trademarks, and their trademarks combined with key terms.

.xxx is scheduled to “go live” on December 6, 2011. Once this occurs, trademark owners should be prepared to address trademark enforcement issues. Trademark owners who feel their rights have been infringed by a domain name with a .xxx TLD will have available remedies and will be able to challenge .xxx domain names that were improperly registered and are being used inconsistently with the adult entertainment industry eligibility requirements. .xxx domain names will be subject to the Rapid Evaluation Service, the Charter Eligibility Dispute Resolution Policy, and the Uniform Dispute Resolution Policy.

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Business Litigation Intellectual Property Litigation Intellectual Property & Technology Copyrights Licensing Telecommunications, Technology & Internet Law Trademarks