Protecting Trademarks From Abuse in the New Adult .XXX Domain

June 23, 2011

The Internet Council for Assigned Names and Numbers (ICANN) has approved the new generic Top Level Domain (gTLD) .XXX for use by the adult entertainment industry and for adult materials. In addition to companies operating in the adult entertainment industries, owners of registered trademarks outside of the adult entertainment industry will have the opportunity and may want to consider taking steps to block the use of their marks as domain names in the .XXX gTLD. The .XXX Sunrise process, during which trademark owners may apply to block registration of their trademarks in this domain, is scheduled to begin in early September 2011 and will last 30 days.

The Sunrise process will be divided into two separate programs:

One program will be for members of the adult entertainment industry that own trademarks or second level domain names in other gTLDs. These entities will be able to register their trademarks or domains as second-level names in the .XXX registry for resolution to their websites.

A separate program will be conducted for trademark owners who are not part of the adult entertainment industry. These owners will be able to record their trademarks to block their registration and use as second level domain names in the .XXX space. These second level domains will not resolve to any website. This block will be anonymous, protecting the identities of the trademark holders in "WHO IS" reports. Sunrise recordation will also establish a reservation of the mark for the duration of the .XXX registry’s contract with ICANN, currently 10 years.

For both programs, a one-time fee will be charged to cover the submission, processing and validation of a particular trademark. An additional fee will be required to obtain registration of the mark as a secondary domain name in the .XXX domain.

For more information regarding the .XXX Sunrise, other domain name issues, or your company’s trademarks or brands, please contact a member of the Firm's Trademark Practice Group.

This alert is intended to be informative and should not be interpreted as legal counsel for any specific fact situation. The information contained herein is for informational purposes only and is not legal advice or a substitute for legal counsel. Readers should not act upon the information presented without consulting professional legal counsel. Pursuant to applicable rules of professional conduct, this communication may constitute Attorney Advertising. © 2012 MARSHALL, GERSTEIN & BORUN LLP, Chicago, Illinois. All rights reserved.