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CLIENT UPDATE - Protect Your Brand from Becoming a .XXX Domain Name

CLIENT UPDATE - Protect Your Brand from Becoming a .XXX Domain Name

New domain names with the extension .XXX will soon be available, says ICANN, the international body charged with the administration of internet domain names. 

Although these domains are for the adult entertainment industry, companies not in the adult entertainment industry may want to “block” others from registering a domain name that includes its brand followed by the .XXX extension (i.e., YOURBRAND.XXX).   Taking such action allows you to avoid future legal action to “take back” such .XXX domain name registrations.   A full outline of the process is at http://www.icmregistry.com/.

When do I need to take action? 

From September 7, 2011 to October 28, 2011, companies may reserve a domain name that corresponds to its qualifying trademark registration in order to ensure that such domain name is not registered by another. The program, Sunrise B, will not result in ownership of a .XXX domain name registration, but rather will prevent such domain name registration from being issued to another. 

The “block” is not automatic.  For example, if a member of the adult entertainment industry has applied for the .XXX domain you want to “block,” and that member owns a corresponding trademark registration or a corresponding domain name, then that member of the adult entertainment industry may have superior rights to you.

How do I take action? 

First, contact an accredited registrar (see the list at http://icmregistry.com/registrars.php).  Each registrar (for example, GoDaddy.com) has user friendly information and many of them offer “email updates” to keep you informed of the important dates related to this process.   The process requires that you submit details of your qualifying trademark registration and a one time fee.  The one time fee is expected to be about $300 per domain name.

Please note:  your trademark registration must be issued prior to September 1, 2011, and must be a national or regional international registration.  Unregistered trademarks, U.S. state trademark registrations, and U.S. Supplemental Register registrations are not sufficient.    

What about typosquatters? 

For domain names that result from common typos of your important brands, you may attempt to obtain such .XXX domains during the General Availability period, which starts December 6, 2011.  That period is handled on a first come, first served basis. 

You should also consider defensively registering .XXX domains corresponding to your unregistered trademarks during that period.  While Sunrise B offers a one time fee, the General Availability period does not.  Each applicant will be responsible for annual registration fees, which are expected to be significantly higher than the annual fees associated with other domains, such as .COM or .NET.

Wyatt’s Intellectual Property attorneys can assist you with attempting to secure .XXX domain names that include your trademark.  Contact your Wyatt attorney for more information.