How To Keep Your Brand Name Out of the Adult Industry’s Neighborhood

By Steven Abreu. A member of our Trademark Practice Group

May 2011 IP Update

The new .xxx top-level domain, scheduled to launch this summer, is causing brand managers and trademark owners anxiety.  Thankfully, a “defensive registration” process is in place that allows trademark owners to block their marks from being abusively registered as a .xxx domain by a third party.  Defensive registration can prevent unwanted affiliation between a wholesome brand and the adult entertainment industry.

Recently, the Internet Corporation for Assigned Names and Numbers (ICANN), has approved the formation of a new .xxx top level domain for the adult entertainment industry and has asked ICM Registry to operate the domain.  ICM set up a process by which registered trademark owners can submit a request to block registration of domain names that contain registered trademarks during a time period called “Sunrise B”.

Although it has not been disclosed when the Sunrise period will begin, some in the industry believe it could begin as early as June 2011. Most importantly to brand owners, a free pre-registration process is now available through the ICM Registry website.

Pre-Registration

Currently open to trademark owners is a pre-registration process that allows trademark owners to signal their interest in defensive registration of a trademark by filling out a pre-registration form at located at http://domains.icmregistry.com.

Once a mark has been pre-registered, ICM Registry will notify the owner when the Sunrise period begins and send the owner the necessary forms and fee information.  Pre-registration can be completed now, and there is no charge to pre-register a mark.

Sunrise B

In the Sunrise B period, ICM will allow a registered mark owner to complete the defensive registration process and block registration of .xxx domain names which contain protected trademarks.

The defensive registration carries with it a one-time fee (the amount has not yet been announced) but will last the life of the .xxx registry. Those who attempt to access a defensively registered .xxx site will see a message saying that the name has been reserved from registration under the ICM Registry IP protection program.

Failing to defensively register a .xxx domain name leaves it open to registration by a third party acting in bad faith.  To protect against an affiliation between your brand name and the adult entertainment industry, we recommend pre-registering with ICM Registry and completing the defensive registration process when it is available.

We would be happy to assist you during this process.  Please contact me or another attorney in our trademark practice group if you have any questions or concerns.