Prevent your Trademark from Becoming a .xxx Domain

.XXX top-level domains are due out soon. This means that you will begin to see (or not see) porn sites moving to the format www.SITENAME.xxx around the end of the year.

This new domain is intended to isolate adult websites within a red light district of the Internet, off the main .com addresses, thereby allowing parents to easily block access to the sites on their kids’ computers. It also, of course, creates a new market for website addresses. Just as a .com website name can currently be registered with a .net or a .org ending, that name can soon be registered with a .xxx ending.

While the new domain is intended only for the adult entertainment industry, trademark owners in other industries have an interest in foreclosing the possibility of their trademarks ever showing up with a .xxx address. Such an association could damage the mark and the brand.

Two mechanisms will help trademark owners prevent their trademarks from being registered as a .xxx domain, but actions must be taken within certain time frames to be effective.

The first mechanism is a “pre-reservation” service which gives trademark owners the ability to pre-reserve their .xxx domains for free. Pre-reserving a domain name doesn’t equate to owning it; instead, the business will be notified in advance of the period during which that particular domain name will go up for sale. Essentially, a pre-reservation is a way to ensure that you get a heads-up when the domain name is about to be offered for sale so that you can participate in the bidding process.

Once the pre-reservation period is over, a “sunrise period” will begin, during which domain names can be defensively registered. Currently set to start in September 2011, the sunrise period will allow trademark owners to file opt-out applications to block others from registering .xxx domain names that contain their trademarks. The applications will be effective for the life of the registry, and a one-time processing fee will be required for this service, likely around $300. The sunrise period could be as short as 30 days, so trademark owners must be ready for this opportunity.

Once the sunrise period ends, two periods begin: a “land rush” period followed by a “general availability” phase. During these stages, trademark owners will not have any rights of priority, and domains will be sold on a first-come, first-served basis. If a trademark owner fails to block its mark from being adopted within a .xxx domain name, its options are limited. It can always proceed with a UDRP arbitration to attempt to force a domain owner to transfer the name, but preventative action during the sunrise period is the cheaper, less risky alternative.

For more information about the pre-reservation process, see here.

For more information about the sunrise period, see here.