For all media inquiries,
please contact:
Ariel Rivera
Communications Specialist
973.530.2453
arivera@csglaw.com

What Trademark Owners Need to Know About the New .XXX Top-Level Domain

August 29, 2011

The Internet Corporation for Assigned Names and Numbers ("ICANN") recently introduced the .XXX top-level domain ("TLD") for the adult entertainment industry. The general purpose of the .XXX TLD is to allow Internet users to easily identify websites containing adult entertainment content. Understandably, most parties outside the adult entertainment industry do not wish to be associated with it. Particularly, companies do not want their trademarks or service marks associated with a domain that links to an adult entertainment website. To help avoid this, an owner of a registered trademark or service mark ("Mark") will be given the opportunity to "block" third parties from registering .XXX domains incorporating their Mark. This opportunity is available during an exclusive period known as the "Sunrise B" period. The period opens on September 7, 2011 and closes on October 28, 2011.

During the Sunrise B period, only those who own valid U.S. or international registrations for a Mark issued prior to September 1, 2011 may apply to block. Importantly, owners of U.S. registrations on the Supplemental Register are not eligible. If an application to block a .XXX domain during the Sunrise B period is approved, that domain will be effectively removed from the pool of domains available to others. Any attempts to access that .XXX domain will direct users to a standard informational page displaying a notice stating that the domain is not available for registration. The WHOIS information will simply list standard registry information.

Once the Sunrise B period closes, registered trademark owners can no longer block a .XXX domain from being registered. Instead, they would need to register a .XXX domain with their Mark as they typically would with their registrar of choice during the "General Availability" period, which opens on December 6, 2011. The drawback is that during this period, since the .XXX domains are available to the general public, they may only be registered on a first-come, first-served basis. Thus, it is imperative that registered trademark owners block any .XXX domains during the Sunrise B period. This could save them money and time in the long run as it would be far more expensive to act against a third party who registers a .XXX domain with their Mark during the General Availability period before a registered trademark owner does.

Trademark owners who apply to block during the Sunrise B period will be charged an initial one time processing fee. The fee varies between the registrars. However, anticipated registrar filing fees should be no more than a few hundred dollars to block each domain. Also, the block is permanent with no additional fees required to maintain it.

For more information on the .XXX domain, how to block .XXX domains or other Internet related issues, please contact:

Peter E. Nussbaum, Member of the Firm | Phone (973) 530-2025 | pnussbaum@wolffsamson.com

Rachel C. Santarlas, Associate | Phone (973) 530-2064 |rsantarlas@wolffsamson.com