Trademarks

Marshall, Gerstein & Borun LLP reminds you that brand owners have only a few more days to block trademarks from being registered as domain names in the .XXX adult entertainment domain registry. Because of processing time, we must receive blocking requests by October 25, 2011. Please contact one of our attorneys immediately to discuss blocking your trademarks from .XXX registration.

For more information, please see the following notice.

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Marshall Gerstein IP Digital Enforcement Team can help you protect your trademarks in the new .XXX adult entertainment domain registry. From September 7, 2011 to October 28, 2011, companies and individuals not engaged in the adult entertainment industry can apply to reserve their registered trademarks in the .XXX registry (e.g., YOURMARK.XXX) as part of a Reservation Request program ("Sunrise B"). Reserving your trademark will block registration of the identical trademark by third parties when the domain opens for Landrush and Regular registrations. During this same period, companies engaged in the adult entertainment industry that own registered trademarks or operate websites under registered second-level domain names may register these as second-level .XXX domain names ("Sunrise A").

To qualify for the Sunrise B period blocking reservation, a company must own a valid national level U.S. or international trademark registration as of September 1, 2011, and pay a nominal fee. Once the trademark is recorded, the .XXX registry will refuse to register any second-level domain name which is identical to the registered trademark. For the purposes of the Sunrise program, only registered trademarks can be the basis for reservation or registration, and, in the U.S., the registration must be on the Principal Register - Supplemental Registration will not be sufficient.

After the .XXX domain goes live, trademark owners that have not reserved their trademarks, or whose Sunrise B applications were refused due to Sunrise A registrations, will be able to challenge registered .XXX domains through Uniform Dispute Resolution Policy (UDRP) proceedings or the new Rapid Evaluation Service (RES) that the registry will offer.

If you or your company are concerned about the possibility of a third party registering and using your trademark in the adult entertainment domain space, contact us to discuss the Sunrise period process and your company's trademarks.

Nine Essential Questions and Answers:

1. Does my company need to register its trademarks for the Sunrise Period? No. But if you are concerned about your trademark being used or registered or used in connection with adult entertainment services, doing so would be less expensive and more certain to block registration of the identical trademark than later using the RES or filing a UDRP complaint and should be seriously considered.

Especially if your trademark is well-known, has significant search engine visibility, or has a denotation likely to make it desirable as a .XXX domain, it may be an attractive target for registration by someone else as a second-level domain name in the .xxx domain. Reservation or registration during the Sunrise period would block the registration of a domain name which is identical to the reserved trademark. If you do not reserve the trademark during the Sunrise B period, you would still be able to challenge its registration and use under the UDRP or RES. However, you would then have a much higher burden of proof and cost: having to pay for arbitration and attorneys' fees to prove that you have rights in the trademark, that the domain name is identical or confusingly similar to your trademark, and that the trademark was registered as a domain name and used in bad faith.

Most registrars also allow you to subscribe to periodic e-mails about the Sunrise and Landrush periods and other developments relating to the .xxx registry.

2. Where do I apply to block use of my trademark? ICM is the owner of the .xxx registry, and as of September 7, 2011, it will begin accepting both registration applications and blocking applications filed by a number of Registrars. The list of Registrars, including some of the most well-known, can be found at www.icmregistry.com/registrars.php. You can also use Marshall, Gerstein & Borun to prepare, file, and oversee your Sunrise B application. We have established relationships with registrars and can help protect against inadvertent errors in the process and ensure your Sunrise B application is part of your company’s online intellectual property protection strategy.

3. What if I have a valuable trademark but it has not been registered? Only registered trademarks can be the basis for a blocking registration. If you do not have a federal or international trademark registration, you will still be able to challenge the registration of identical or confusingly similar domain names using the UDRP process. Marshall, Gerstein & Borun can assist you in challenging such names.

4. Will a Sunrise B trademark reservation prevent the registration or use of .xxx domain names which are confusingly similar but not identical to our company's trademark? No. Sunrise B reservations will only block the registration of the identical term as a domain name. You will have to rely on actions brought under the UDRP or trademark law to force the cancellation or transfer of domain names that are confusingly similar to your trademark, provided you can demonstrate that such domain names were registered and used in bad faith. However, as mentioned above, ICM, the .xxx registry owner, is also developing a RES procedure to give trademark owners an expeditious and strong tool to prevent registration of domain names confusingly similar to their trademarks. See www.icmregistry.com.

5. How long will a Sunrise B trademark reservation block registration in the .xxx domain? For the entire term of the Registry Agreement between ICANN and ICM — presently 10 years, provided that at the close of the Sunrise period no conflicting applications by a Sunrise A (adult entertainment industry trademark owner) participant have been filed. If such a conflicting application has been filed, the Sunrise B trademark owner's recourse would be to file a UDRP Complaint. Note that the Sunrise A application will be given priority, although it will be given notice of the Sunrise B trademark registration and cannot claim that it had no knowledge of the Sunrise B owner's rights in a subsequent dispute.

6. Will information about the Sunrise B trademark reservation be made public? To a limited extent, yes. There will be a WHOIS record for the registered trademark. However, it will only identify the registrar for the blocking registration, and not the owner of the registered trademark.

7. Will Sunrise B and A applications be given priority based on their date of filing for the Sunrise process? No. All applications that qualify will be considered as having been filed at the same time. However, Sunrise A applications will be given preference over Sunrise B applications.

8. What will it cost to reserve trademarks in the .xxx registry during the Sunrise B period? The cost will vary according to the Registrar service that is used. There will be a one-time fee to cover the submission, processing and validation of a trademark. An additional fee would be charged to register the trademark as a second-level domain name in the .xxx registry. Service provider Sunrise B fees vary widely, but Marshall, Gerstein & Borun offers an economical single set fee service. Contact us today for a quotation or consultation.

9. What happens after the Sunrise Period closes? Two Landrush Periods will follow. From November 8, 2011 until November 25, 2011, members of the adult entertainment community that did not qualify for Sunrise A registration will be able to file applications to register domain names in the .xxx domain. If there is more than one application filed for the same .xxx domain, a mini-auction will be held between the competing applicants at the end of the Landrush period. Both the UDRP and RES programs will be available to address concerns of trademark owners after registration of second-level domain names.

Beginning on December 6, 2011, second-level .xxx domains will be available to both members of the community and non-members on a first-come first-served basis.

Contact Marshall, Gerstein & Borun’s Trademark Practice Group or use our Directory to contact an attorney to answer your questions and propose IP Digital Enforcement solutions.

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.