Trademark Owners Should Act Now to Protect Trademarks Against Misuse During Launch of .XXX Internet Domain Name System

On Friday, March 18, ICANN, the international body charged with the administration of internet domain names, voted to approve the .xxx top-level domain (TLD). The .xxx TLD is designed, not surprisingly, for pornographic websites.

Concern has been voiced by trademark owners about the possibility of a cybersquatter registering [YOURTRADEMARK].xxx for a pornographic site. In response to these concerns, ICM Registry, the entity that will administer the .xxx TLD, has established procedures by which trademark owners can act preemptively to protect their brands. An outline is available here.

As indicated, ICM Registry will conduct a “Sunrise B” domain name registration procedure whereby businesses who are not in the adult entertainment industry can nevertheless pre-reserve .xxx domain names that include their trademarks in order to block those domain names from live use. The Sunrise B period is set to occur within the first 30 days following launch of the new TLD, which is expected to commence in Q2 2011.

In advance of the Sunrise B period, ICM Registry is providing a “name reservation” service through which interested parties can, at no charge, attempt to pre-reserve .xxx domain names for future reservation during the Sunrise B period. The name reservation procedure can be found here. Reserving .xxx domain names now should make it easier and less expensive for trademark owners to secure and block these domain names from being registered.

The process for pre-reserving .xxx domain names is relatively simple. However, we are prepared to assist your organization in attempting to secure .xxx domain names that include your trademarks to ensure that these domain names, and your trademarks, are not misused by a cybersquatter. According to the ICM Registry, more than 500,000 name reservations have already been received in the seven days since ICANN’s approval of the .xxx TLD.

For more information, please contact the Seyfarth attorney with whom you work, or any Intellectual Property or Corporate attorney on our website.