September 1, 2011
Practice Group:
Intellectual Property
Blocking .XXX Adult Names that Match
Your Trademark
Beginning on September 7, 2011, the first ever requests to register .XXX top-level domain names will
be accepted by ICM, the company sponsoring the .XXX registry. The .XXX gTLD (generic top level
domain, similar to a .com or a .net) is intended as a voluntary option for adult entertainment sites on
the Internet. Because many non-adult industry brand owners will want to ensure their brand is not
affected and to block the registration of any .XXX domains that include their marks, ICM is offering
non-adult brand owners the opportunity to submit defensive domain name applications to reserve
.XXX domain names during a "Sunrise Period," running from September 7 to October 28, 2011.
These defensive applications to protect your brands under the .XXX registry may be made through
one of several dozen ICM Registry-accredited registrars. The application, called a "Reservation
Request," must be filed for each individual domain name corresponding to the mark sought to be
protected during the Sunrise Period. The Reservation Request must include details regarding the
trademark registration. Proxy services intended to mask or make private the name of the applicant
may not be used in connection with .XXX domain applications. ICM Registry-accredited registrars
will charge fees for these defensive reservations. The reservation will be permanent, subject to the
ICM Registry's right to verify that the registered trademark has not been abandoned, cancelled,
invalidated or otherwise terminated.
To be eligible, the registered trademark associated with a Reservation Request must be issued prior to
September 1, 2011 with national or regional international effect. Further, the domain name sought
must correspond to the entire text of a word or stylized trademark provided that the textual component
as a whole or in all parts has not been disclaimed or excluded from the registration.
Parties in the adult entertainment industry will also be able to apply to register .XXX domain names
during the same Sunrise Period enjoyed by non-adult industry brand owners. Adult industry applicants
must own and use in an eligible adult entertainment business a trademark registered prior to
September 1, 2011 or may be the operator of a corresponding domain name created prior to February
1, 2010 in another top-level registry.
At the close of the Sunrise Period on October 28, 2011, assuming that no competing qualified
application for the same domain name is filed by a member of the adult entertainment industry, the
domain name will be reserved and resolve to a standard informational page stating that the name is
reserved from registration under the ICM Registry IP protection program. The Whois information will
refer only to the ICM Registry. If more than one trademark owner applies for a Reservation Request,
no refunds or apportionment of fee will be provided.
If both a non-adult and adult industry applicant have applied for a .XXX domain during the Sunrise
Period, the adult entertainment industry applicant will get the domain. However, the adult
entertainment industry applicant will be notified of the application by the non-adult entertainment
industry applicant. The adult entertainment industry applicant will then have the opportunity to
withdraw its application and will not be able to claim lack of notice in any subsequent action by the
non-adult industry applicant, such as for trademark infringement or dilution.
In the event a trademark owner misses the Sunrise Period, it may submit a Reservation Request once
the general availability period opens on December 6, 2011. However, where a non-adult industry
trademark owner does not register its mark defensively during the Sunrise Period, any third party will
have equal ability to register the mark as a .XXX domain name and provide adult content under it. The
existing Uniform Domain Name Dispute Resolution Policy will apply in the .XXX registry. In
addition, a new procedure known as the Rapid Evaluation Service ("RES"), unique to .XXX, will also
be available to resolve disputes. The intent of RES is to provide a prompt remedy for situations
involving (1) well-known distinctive marks of "significant commercial value” or (2) personal or
professional names of individuals.
If you would like assistance in selecting eligible trademarks for Reservation Requests during the
Sunrise Period or assistance in making these applications, please contact us.
Authors:
Britt L. Anderson
britt.anderson@klgates.com
+1.650. 798.6746
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