Trademark Owners Should Plan for the Arrival of .XXX Domain Names


In April 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) authorized the creation of a new .xxx sponsored top-level domain (sTLD) for the adult entertainment industry. (sTLDs are designed for members of a specific community.) Initially, an adult entertainment company will need to show some prior rights in a mark before it can obtain a corresponding .xxx domain name for its mark. Later, however, such limitations will fall away and any available term may be registered as a .xxx domain name. Beginning on September 7, 2011, owners of trademark registrations can prevent their marks from being registered as .xxx domain names through a mechanism referred to as “Sunrise B.”

To take advantage of Sunrise B, a party must own a valid trademark registration in a jurisdiction where the party has engaged in substantial bona fide commercial activities. The cost of blocking the registration of a .xxx domain name during Sunrise B will be approximately US$200 to US$300. Once blocked, the .xxx domain name in question will not be available for registration for a period of 10 years. The blocked .xxx domain name will be “reserved” from registration and will take readers to a standard page that indicates that the domain name has been blocked from use. In addition, the WHOIS report (i.e., the domain name title record) for this domain name will only identify the ICM Registry, the authorized registry for .xxx, as the registrant.

ICM Registry has stated that it is only offering trademark owners this one opportunity to block the registration of .xxx domain names that correspond with their registered trademarks. After that, trademark owners would need to bring an infringement, dilution, cybersquatting, or similar claim to try to stop use of a .xxx domain name that incorporates their marks. Such proceedings, whether in court or pursuant to a Uniform Domain Name Dispute Resolution Policy proceeding, would obviously be more expensive than using Sunrise B, and would have a far less certain outcome.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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