Registration of Domain Names in .XXX Registry Opening For General Public on December 6, 2011

December 1, 2011

Although the deadline has passed for trademark owners to block use of their registered trademarks in connection with .XXX top level domain names (e.g., YOURMARK.XXX) or for members of the adult entertainment industry to register established trademarks, beginning December 6, 2011 the registry will be open for anyone to register second level domain names in the .XXX registry. There are no trademark registration or prior use requirements to registration. Domain names may not, however, be registered or used in bad faith - i.e. if they create confusion with another party's trademark, if they are registered to block another party's registration or use, or if they are registered to force trademark owners to pay exorbitant amounts.

Second level .XXX domains (the characters to the left of the dot) registered during general availability are considered traditional domain registrations, and will require payment of annual fees. In addition, unless registered via a domain name proxy service, the owner information will be available to the public in the WHOIS database. We suggest clearing the use of proposed names prior to registration, and using an experienced and validated domain name registrar for registration of .XXX domains and privacy protection services. Marshall, Gerstein & Borun can assist in both the clearance and registration processes.

Service provider general availability fees range from $110 - $250 annually per domain and include various levels of service. We can provide you with the fee information charged by various registrars and assist in making the required filings. General availability opens on December 6, 2011 and domains will be registered on a first-come, first-served basis. Service providers are encouraging those seeking to register .XXX domain names during general availability to provide instructions as soon as possible since domain names will be registered on a first-come-first-served basis.

If you are concerned about the possibility of a third party registering and using your trademark in the adult entertainment domain space but did not apply for or meet the registration requirements for Sunrise B blocking, please contact Marshall, Gerstein & Borun to discuss securing a general availability .XXX domain.

This alert is intended to be informative and should not be interpreted as legal counsel for any specific fact situation. Views expressed are those of the author and not necessarily the opinions of Marshall, Gerstein & Borun LLP or any of its clients. 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. © 2011 MARSHALL, GERSTEIN & BORUN LLP, Chicago, Illinois. All rights reserved.