By Nicole J. Harrell, Intellectual Property, Data Privacy and Security

On March 18, 2011, the International Corporation for Assigned Names and Numbers (ICANN) approved the formation of the .xxx top-level domains for the adult entertainment industry. The ICM Registry (ICM) will sponsor the .xxx domains which are scheduled to launch on September 7, 2011.

Prior to the launch, 35 companies in the adult entertainment industry were accepted into the Founders’ Program and reserved over 1,500 domain names. The Founders Program allowed qualifying applicants to claim their existing domain in the .xxx top-level domain and acquire additional domain names. Recognizing the need for trademark owners to protect their registered marks, the ICM Registry has developed a procedure to enable owners of registered trademarks to block third parties from registering these marks as .xxx domains, thereby preventing adult entertainment industry companies from associating prurient services and products with well-known brands.

Beginning on September 7, 2011, the Sunrise A and Sunrise B periods will commence. Both periods will run concurrently and end on October 28, 2011. Sunrise A is open to verified members of the adult entertainment industry who have either verifiable trademark rights or are owners of matching domains in other top-level domains. Sunrise B will allow intellectual property owners who are not members of the adult entertainment industry to block .xxx domain names corresponding to their registered trademarks for at least the length of the 10-year contract between ICANN and ICM.

To successfully register during Sunrise B, several criteria must be met: (1) the person must own and actively use the trademark, (2) the trademark must be registered with the Patent and Trademark Office prior to the submission of a Sunrise B application, and (3) the trademark or domain name must correspond exactly to the entire text of a wordmark or textual component of a word and design mark. If the application is successful, ICM will remove the domain from the pool of .xxx available domain name registrations for 10 years.

In the event a Sunrise A application and Sunrise B application are submitted for the same trademark, the Sunrise A applicant will be notified of the Sunrise B application and given the opportunity to withdraw its application. The Sunrise B applicant will also be notified of the Sunrise A application for the same name. Priority will be given to the Sunrise A application and if it elects to proceed with its application, the Sunrise A applicant will secure the domain name. The Sunrise B applicant may later have the opportunity to institute proceedings to stop the Sunrise A application from using the name as a .xxx top-level domain. In such proceedings, the notice given by ICM will be important and preclude a claim of lack of notice.

Following the conclusion of the Sunrise A and Sunrise B periods, there will be a “quiet period.” Then, a Landrush period will begin on November 8, 2011, and end on November 25, 2011. Landrush will be only open to qualifying members of the adult entertainment industry.

Another “quiet period” will follow Landrush, and then the General Availability period will begin on December 6, 2011. This period will be open to all members of the adult entertainment industry and domain names can be reserved on a first-come, first-served basis. In addition, it is expected that a person who did not qualify to file a blocking application during Sunrise B will be able to file such applications to protect their unregistered trademarks or non-resolving names during this period.

We encourage you to review your trademarks and brands and consider applying to block those from registration by ICM in the .xxx registry. If you have unregistered trademarks, we encourage you to apply for registration; however, you will not be able to make use of the Sunrise B period and instead should consider attempting to block the availability of such unregistered trademarks during the General Availability period. If you have any questions about this process, please contact Nicole Harrell or any member of our Intellectual Property and Franchise Practice Group.

The contents of this publication are intended for general information only and should not be construed as legal advice or a legal opinion on specific facts and circumstances. Copyright 2024.