from www.legal.tmc.com – How would you feel if your valuable trademark (e.g. “STARFLASH”) appeared in the newly created adult entertainment domain, .xxx, as a domain name for an adult website (e.g. starflash.xxx)?

Recently, the organization that controls issuance of top level internet domain names (e.g., .com, .net, .us, etc.) approved a new top level domain, .xxx, for use by the adult entertainment industry. The idea is that, by having a unique top level domain for businesses in that industry, it will be easier to filter content, so that it is not inadvertently provided to inappropriate audiences.

The problem is that many non-adult-oriented businesses may not want their trademarks associated with such websites, which some may find offensive. Accordingly, the operator of the .xxx domain is providing a process to enable owners of federally registered trademarks to block others from registering those marks in the .xxx domain. This will prevent adult entertainment companies from associating their activities with prior-established trademarks used by non-adult-entertainment businesses.

How does it work?

There will be a brief period of fifty days, September 7, 2011 – October 28, 2011 (the “Sunrise B period”), during which the owners of those federally registered trademarks may submit an application to the domain operator, along with a fee of between $200-$300 per mark, to have that trademark blocked from being used in connection with the .xxx domain. If this is successfully done, that domain name will be blocked from use by anyone in conjunction with the .xxx domain, for at least the next ten years. However, only domain names that exactly match the registered trademark are eligible for this protection.

During that same fifty day period (in this case, called the “Sunrise A period”), verified members of the adult entertainment industry may also apply for early registration of .xxx domain names, provided those applicants currently possess either verifiable trademark rights in the term to be used with the .xxx domain or own exactly matching domain names in some other top level space, such as .com, .bus, .net, .us, etc.

What if I want to prevent registration of a domain name that is similar to my trademark from being registered in the .xxx space?

The Sunrise periods are intended to restrict domains that exactly match registered trademarks and domain names that are in use prior to the opening of the .xxx space. Sometimes, however, it is also important to protect domain names that are misspellings or the result of adding a derogatory term to a mark (e.g. “www.starflashstinks.xxx”). To do that you need to register those domain names yourself if you wish to control them, just as you currently have to do with .com or other domains. If your products and services are not associated with the adult entertainment industry, then those domains will be found only on a holding page. That effectively prevents any adult websites from coming up in connections with those domains, but does not allow you to connect them to your regular website.

If you do not register the domain yourself, a provider in the adult industry could register such a domain name and direct it to a site that you or your customers may find offensive. Should that occur, there are certain procedures that can be followed to take down the site. However, such procedures can be more expensive and time-consuming than registering the domain name yourself.

What should I do?

What action you choose to take with respect to the new .xxx space will depend on a number of factors, including how important your marks are to your business and how damaging it would be if an adult site were to start using a similar domain name in the .xxx space. Accordingly, all trademark owners should review their portfolios now to determine if there are any trademarks that they wish to seek to block from use with the .xxx domain. Time is critical, because the opportunity for using the simplified procedure extends only from September 7, 2011 to October 28, 2011.