Limited Time Exists For Trademark Owners to Block Domain Names
September 29, 2011

The Internet Corporation for Assigned Names and Numbers (ICANN) is the entity responsible for ensuring the stable and secure operation of the global Internet system of domain names and Internet protocol addresses. Large changes to how domain names are operated will be occurring in the upcoming months. For example, beginning in January 2012, entities will be able to apply for their own web domain, representing a fundamental change to branding and marketing opportunities on the Internet.

Another current change is that ICANN has now approved ".xxx" as a new Internet domain name extension for the adult entertainment industry, and has appointed ICM Registry LLC (ICM) as the registrar in charge of facilitating its implementation. This registry has been formed to focus the Internet location for adult entertainment content, and to more easily allow the large segments of the general population wishing to avoid contact with such sites to more easily filter out and avoid any adult content and sites. The rules for implementing this registry allow certain groups to receive preferential rights before the process begins for the general public to obtain domain names containing the .xxx extension.

Owners of non-adult entertainment related trademarks that were registered with the US Patent and Trademark Office on or before September 1, 2011 who want to protect their trademark from being used with a .xxx extension have been granted a limited period, called the "Sunrise B" period, to register their trademark with ICM through the various registrars for purposes of blocking such use. Owners of qualifying federal trademarks may register through any of the various domain name registrars during the Sunrise B period commencing September 7, 2011 and continuing through October 28, 2011.

For Sunrise B filings to be effective, ICM requires registrants to meet various qualifications, including that (i) they are the owner or licensee of the federally registered trademark, (ii) the trademark was federally registered prior to September 1, 2011, (iii) the domain name applied for matches the trademark exactly (with limited exceptions for non-standard characters such as ampersands and hyphens), and (iv) the domain name applied for cannot be a translated version of a trademark in a script other than Latin characters. There is a one-time filing fee (in the $300 to $350 range depending on the registrar), which protects the domain name perpetually with no additional annual fees or registrations.

Despite the Sunrise B registration process, having a qualifying federal trademark is not the end of the story. Sunrise A registrants (for adult content related domain names and trademarks) will have priority over Sunrise B registrants (non-adult entertainment related trademarks). The Sunrise A registration period is also between September 7, 2011 and October 28, 2011, and provides priority to adult content related domain names registered prior to February 2010 and to federally registered adult content related trademarks registered prior to September 1, 2011 who desire to acquire and use matching domain names within the .xxx extension registry.

When the sunrise periods have expired, if there is no Sunset A registration that takes priority over a trademark duly registered in the Sunrise B period, then ICM will reserve that domain name and block it from future use. A search of that domain name will show a blank or reserved page and the "whois" information for that domain name will not reflect the entity who requested the block, but rather will reflect the registry information.

The end result is that this is a favorable and preferential process if you own or license a trademark meeting the requirements for Sunrise B registration and desire to block that trademark from becoming a domain name in the .xxx registry. If so, the bottom line is not to miss the October 28, 2011 deadline. If you need assistance with any filings or have any questions about the requirements or process, we would be happy to be of assistance.

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