Diserio Martin O'Connor & Castiglioni LLP

Protecting Your Trademark from the E-Red Light District: An Ounce of Prevention is Worth a Pound of Cure

September 7, 2011

Beginning today, September 7, 2011 owners of United States federal trademark registrations will be able to prevent their mark from being used in the soon-to-be internet “red light district” populated by websites using .xxx top-level domains (TLDs).  Earlier this year the Internet Corporation for Assigned Names and Numbers (ICANN) announced that it would begin offering .xxx TLD registrations.  The registry will be operated by ICM Registry (ICM).  The intent of the new TLD is to create a designated place on the internet for the online adult entertainment industry and sexually explicit content.  The new TLD is also intended to reduce malware, email spam, and infringement of intellectual property.

Since the .xxx TLD is new territory on the internet, there will be a “land grab” of sorts as any domain ending in .xxx will be available for registration.  To safeguard intellectual property owners from domain squatters and IP infringers, ICM has established an opt-out, or “Sunrise,” period for registered trademark owners.  The opt-out period is finite and owners must act during this time to prevent use of their trademarks in the .xxx domain.

Here is what trademark owners need to know:

  • During the “Sunrise B Period,” starting September 7, 2011 and closing October 28, 2011, owners of trademark or service mark registrations who are not members of the online adult entertainment industry community will have the opportunity to reserve .xxx domain names that correspond to their mark by filing an opt-out application.
  • After the Sunrise B Period ends, .xxx domain names will be available for registration by the general public on a first-come first-served basis.
  • Sunrise B only applies to owners of federally registered trademarks which are registered as of September 1, 2011.  Sunrise B does not apply to owners of state registrations, common law marks, unregistered marks, or business names.
  • Cost to opt-out under Sunrise B is anticipated to be a one-time fee of $200 to $300 covering a period of ten years.

Trademark owners who fail to register during the Sunrise B Period will still have the ability to contest a domain name registration under the current ICANN Uniform Domain Name Dispute Resolution Policy (UDRP), however, the cost of a single arbitrator for a UDRP dispute ranges from $1300 and up.  Given the relatively small financial cost of registering during the Sunrise B Period, this is truly a case where an ounce of prevention is worth a pound of cure for trademark owners.

For more information contact Matthew C. Wagner.