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.XXX Domains To Launch For the Adult Entertainment Industry, Creating
Risks for Trademark Owners Protective Sunrise Procedure
to be Available
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After more than ten years
of deliberation, the Internet Corporation for Assigned Names and Numbers
(ICANN) approved the creation of the .XXX top level domain name (TLDs) for use
by the adult entertainment industry. Registration of .XXX domain names
is scheduled to launch later this year with a “Sunrise Period” beginning on
September 7, 2011 that will give trademark owners the rights to act
preemptively and remove domain names comprised of their marks from the pool
of available .XXX domains. Brand owners already play
“whack a mole” with cybersquatters who register
their trademarks as domain names under “.com,” “.net,” “.org” and other well
known and widely-used TLDs. The creation of this new registry, to be
administered by ICM Registry LLC (ICM, located at www.icmregistry.com), will give cybersquatters yet another opportunity to trade off the
value of marks owned by legitimate trademark owners. Compounding this
risk is the fact that the .XXX domain names are, by definition, intended for
and associated with pornography, a field with which main stream companies do
not generally wish to be associated. As is well known, this type of
cybersquatting can diminish the value of a mark, and, perhaps more important,
may lead consumers to believe that the trademark owner is somehow associated
with the pornographic site, tarnishing the established image of the trademark
owner and its brand. For this reason, there will
be a “Sunrise Period” in which trademark owners who are not part of the adult
entertainment industry may, upon application to ICM, remove their marks from
the pool of available .XXX domain names. Successful Sunrise
applicants will have to show that they own a trademark or service mark
registration “of national effect” that was issued prior to submission
of the Sunrise application, and that they make bona fide use of the
trademark or service mark in the jurisdiction in which the mark was
registered. The domain name for which Sunrise protection is being
sought must correspond exactly to the text of the mark being
claimed. Thus, as presently described by ICM, the owner of a trademark
registration for the mark XYZ will be able to claim Sunrise protection for
the domain name XYZ.XXX but not for any variants of the domain name,
such as, for example, “XY-Z.XXX” (with a dash between the Y and Z). ICM
policies and procedures for the Sunrise period should be published within two
weeks. The cost for filing a Sunrise application should be
approximately $200. The Sunrise Period for .XXX
domain names will run from September 7, 2011 to October 7, 2011.
Following the conclusion of the Sunrise Period, trademark owners will also
continue to have the right to challenge registration of .XXX domains in
administrative proceedings under the Uniform Domain Name Dispute Resolution
Policy (UDRP) and related mechanisms and in court. Given the cost of
such proceedings in terms of both time and resources, trademark and service
mark owners are encouraged to act preemptively and take advantage of the
Sunrise Period to protect their most valuable marks by removing them from the
pool of available .XXX domains. If you would like further
information on this matter, please contact Louis J. Levy (llevy@lermansenter.com or
202.416.6748) or any other attorney in this office. June 29, 2011 |
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This memorandum is intended only as a general discussion of these issues and should not be regarded as legal advice. We would be pleased to provide additional details or advice about specific situations if desired. Copyright © 2011, Lerman Senter PLLC 2000 K Street NW,
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