Margarita Calpotura Trade Secrets Law Blog on Lawyers.com

The Internet Corporation for Assigned Names and Numbers (“ICANN”) has approved .XXX as a sponsored top-level domain.  As the name suggests, the .XXX domain names are designed specifically for the adult entertainment industry.  Trademark owners who are not part of the adult entertainment industry must take affirmative steps to protect their marks from being used with an .XXX domain name.

ICM Registry, who is operating the .XXX domain name registry, is offering several pre-registration procedures for reserving .XXX domain names.

Sunrise A and Sunrise B Periods:  Available September 7 - October 28, 2011

Sunrise A allows those in the adult entertainment industry who have a current registered trademark or a pre-existing exact-matching domain name, to apply to register .XXX domain names.

Sunrise B allows registered trademark owners, who are not in the adult entertainment industry, to block their trademarks from being used as .XXX domain names.  Trademark owners can do this by filing a Reservation Request through one of ICM Registry’s accredited registrars, listed on ICM Registry’s website:  http://www.icmregistry.com/registrars/.  The cost of filing the Reservation Request varies among the registrars, but ranges from about $200 to $350 per trademark, and is valid for 10 years.

However, even if a trademark owner successfully blocks the registration of their mark as an .XXX domain name, there are limitations.  The blocking only applies to the exact trademark, and leaves variations and close misspellings of the mark open for registration.  Furthermore, blocking the registration does not give a trademark owner the right to use the .XXX domain name; it simply disallows a third-party from registering the .XXX domain name.

General Availability:  Begins December 6, 2011

For trademark owners who missed the Sunrise B Period, and for those who did not qualify under the Sunrise B Period because they did not own a registered trademark, the General Availability Period allows applicants to register or block .XXX domain names on a first come, first served basis.  This allows applicants to block their personal domain names, company domain names, product domain names, etc. for which they do not have a federal trademark registration, from registration on the .XXX domain name registry.

For questions, comments, or further information about protecting trademarks, contact a California business lawyer from The Miller Law Group, P.C., at 650-566-2290, or go to http://www.millerlg.com.