Written by Geri Haight

As we reported in December, two adult entertainment companies filed suit in federal district court in Los Angeles against the Internet Corporation for Assigned Names and Numbers (ICANN) and ICM Registry, the sole operator of the .XXX domain name registry. The complaint, filed by adult filmmaker Digital Playground Inc. and Manwin Licensing International SARL, alleged that ICANN and ICM Registry engaged in monopolistic conduct, price gouging, and anticompetitive and unfair practices relating to ICANN’s grant of the .XXX gTLD to ICM Registry.  The complaint contained some very interesting allegations, particularly given ICANN’s pending launch of a number of new gTLDs.  In essence, the complaint asserts that ICANN and ICM Registry conspired to establish the .xxx gTLD with the understanding that the operators of adult websites like Digital Playground and Manwin would be forced to pay fees in order to register new .xxx domain names in the .XXX TLD, a registry that ICM Registry now monopolizes.  Continue Reading Legal Challenge To ICM Registry’s and ICANN’s .XXX gTLD Continues – What Are The Implications For Other gTLD Applicants?

Written by Geri Haight

What if someone applied for a new generic Top Level Domain (gTLD) that is confusingly similar to the gTLD applied for by your company?  Who has standing to file an objection or to submit a public comment in response to an applied-for gTLD?  These are the questions that many participants and observers of the Internet Corporation for Assigned Names and Numbers’ (ICANN) new gTLD program are asking.  Continue Reading ICANN’s New gTLDs Program: Disputes, Comments and Objections

Although .xxx domain names will not become generally available to the public until December 6, 2011, many registrars are offering pre-registration of these domain names now.  If you submit an application to reserve a .xxx domain name during the pre-registration phase (i.e., before the December 6th launch date), you are not guaranteed registration of that domain name.  Nonetheless, it makes sense to consider pre-registering desired .xxx domain names now before the general availability phase, when all remaining .xxx domain names will be available on a first-come, first-served basis.

Pre-registration presents an opportunity for trademark owners to protect their brands from use in connection with adult entertainment website.  As explained in our prior post explaining the Sunrise B period, the owners of registered trademarks who are NOT in the adult entertainment business can protect their brand by blocking access to .xxx domain names that correspond to their registered trademark(s).  But, the Sunrise B procedure is only open to those who own trademark registrations.  What about the small business owners, the non-profits, or the start-up businesses who either have not applied for a federal trademark registration yet or whose federal trademark applications are still pending?

That’s where pre-registration comes in.  You can pre-register your <unregistertrademark.xxx> domain name now in order to have the best chance of preventing it from being registered or used by another party. Pre-registration is also beneficial if you want to register .xxx domain names that include common misspellings of your trademark or generic or descriptive wording added to your trademark.  These types of .xxx domain names cannot be the subject of a Sunrise B application.   So, in order to prevent their registration and use by unauthorized third-parties, you could pre-register these domain names now in order to be better positioned to obtain the registrations on December 6th.

Several registrars are offering pre-registration.  For example, GoDaddy is offering two types of pre-registration:  priority pre-registration, for $199.99, and pre-registration, for $99.99.  GoDaddy explains that priority pre-registration will position you somewhat better to obtain registration of a sought-after .xxx domain name than non-priority pre-registration will.  Network Solutions is offering pre-registration of general availability .xxx domain names for $129.99.

So act now to get in the front of the line for general availability .xxx domain names!

Written by Geri L. Haight and Joseph M. DiCioccio

Are you concerned that the name of your business or the trademark used in connection with your best-selling product will be used in connection with an adult entertainment website given the soon-to-be launched .XXX domain names? Domain names ending with the generic top level domain (gTLD) .XXX will become available to the general public in December 2011. The time for trademark owners to act to prevent their marks from being used in connection with a .xxx domain name is now.

Act Now: Opt Out

Owners of registered trademarks may “opt out” of having those trademarks sold as part of the .XXX domain name offering. This procedure, called the “Sunrise B Period,” began on September 7, 2011 and ends on October 28, 2011. It runs concurrently with the “Sunrise A Period,” which permits businesses in the adult entertainment industry to register .XXX domain names that correspond to domain names from other gTLDs (such as .com, .net, etc.) or to such businesses’ trademark registrations.

During the Sunrise B Period, owners of registered trademarks who are NOT in the adult entertainment business can block the relevant domain name corresponding to a particular trademark registration from being registered or used. Applications can be made through approved domain name registrars.  The result of a successful Sunrise B application is that the domain name incorporating the trademark will be unavailable for registration, and the domain name will resolve to a standard informational page. On November 8th, at the conclusion of the Sunrise A and B Periods, .XXX domain names that have not already been pre-registered by a member of the adult entertainment industry or blocked by a trademark owner during the Sunrise B Period will be made available to members of the adult entertainment industry on a first come, first served basis (the “Landrush” period). Thereafter, on December 6th, all remaining .XXX domain names will become available to the general public for registration (the “General Availability” period) in December 2011.

Who Is Able to Opt Out and What May Be Blocked?

Owners of a US trademark registration or a foreign equivalent may submit an application during the Sunrise B Period to remove a domain name comprised of the registered trademark from the .XXX domain name offering. Pending US trademark applications, US registrations on the supplemental register, common law or unregistered trademarks, and state trademark registrations do not meet the eligibility requirements for a Sunrise B application. Moreover, the registration forming the basis of the Sunrise B application must be valid as of September 1, 2011. You may only block a domain name that corresponds exactly with the trademark reflected in the registration.

What Happens if Several Parties Seek to Register and/or Block the Same .XXX Domain Name?

  • If several Sunrise B parties (non-adult entertainment businesses) request that a particular domain name be blocked, it will be blocked and no registration fees will be refunded.
  • If several Sunrise A parties (adult entertainment businesses) request the same domain name, an auction will be held to determine who receives the domain name. The domain name will be awarded to the highest bidder.
  • If a Sunrise A party and a Sunrise B party request the same domain name, it will be given to the Sunrise A party, however:
    • The Sunrise A party will be given an opportunity to withdraw its application in light of the Sunrise B application;
    • Each applicant will be given notice of the other’s claim to trademark rights; and
    • If multiple applications remain, the domain name proceeds to auction and will be awarded to the highest bidder.
  • Only domain names registered during the Landrush and General Availability periods are awarded on a first come, first served basis. Sunrise applications are not awarded on this basis.

Can You Apply to Block Registration of Typos of Your Trademark During the Sunrise B Phase?

No. Sunrise B applications can only correspond exactly to the trademark as it appears in the trademark registration. Registration of domain names that are comprised of typographical errors of your trademark or that include generic of descriptive words in addition to your trademark may be registered once .XXX domain names become available to the general public during the General Availability period on December 6, 2011.  Some registrars, like GoDaddy, are allowing pre-registration of such typosquatted .xxx domain names.

It is important that trademark owners consider taking advantage of the Sunrise B Period. Failure to file a Sunrise B application may result in the trademark being registered as a domain name by a third party and used in connection with an adult entertainment website. Moreover, it is typically more expensive to reclaim domain names incorporating trademarks that have been registered by unauthorized third parties (e.g., through a Uniform Domain Name Resolution Policy proceeding or through a negotiated settlement) and it is to file a Sunrise B application.