How to Protect Your Brand From the Coming .XXX Porn Domain

The Adult Industry Gets Its Own Top-Level Domain This Summer. Expect Shenanigans

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The new .xxx top-level domain, scheduled to launch this fall, is causing brand managers and trademark owners anxiety. Thankfully, a "defensive registration" process is in place that allows registered trademark owners to block their marks from being abusively registered as a .xxx domain by a third party. Defensive registration can prevent unwanted affiliation between a wholesome brand and the adult entertainment industry.

On March 18, the Internet Corporation for Assigned Names and Numbers (ICANN) approved the formation of a new .xxx top level domain for the adult entertainment industry and has asked ICM Registry to operate the domain.

An .xxx top level domain was first proposed by the adult entertainment industry in 2000 and, after 11 years of hearings and three earlier refusals, ICANN finally approved the domain.

To allay the fears of businesses outside the adult entertainment community, ICM established an innovative process by which registered trademark owners can submit a request to block registration of domain names that contain registered trademarks during a time period called "Sunrise B."

The Sunrise B period will begin in early September 2011 and will last for thirty days. Perhaps most importantly to brand owners, a free pre-registration process is now available through the ICM Registry website.

Currently open to trademark owners is a pre-registration process that allows trademark owners to signal their interest in defensive registration of a trademark by filling out a pre-registration form at located at http://domains.icmregistry.com.

Once a mark has been pre-registered, ICM Registry will notify the owner when the "Sunrise" period begins and send the owner the necessary forms and fee information. Pre-registration can be completed now, and there is no charge to pre-register a mark.

In the Sunrise B period, ICM will allow a registered mark owner to complete the "defensive registration" process and block registration of .xxx domain names which contain protected trademarks.

The defensive registration carries with it a one-time fee (the amount has not yet been announced but is estimated to be between $200 and $300) but will last the life of the .xxx registry. Those who attempt to access a defensively registered .xxx site will see a message saying that the name has been reserved from registration under the ICM Registry IP protection program.

Failing to defensively register an .xxx domain name leaves it open to registration by a third party acting in bad faith. To protect against an affiliation between your brand name and the adult entertainment industry, we recommend pre-registering with ICM Registry and completing the defensive registration process when it is available.

ABOUT THE AUTHOR
Steven A. Abreu is a trademark attorney with the Boston law firm Sunstein Kann Murphy & Timbers.
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