Brian McLane

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PROTECTING YOUR BRAND FROM THE IMPENDING .XXX DOMAIN

August 12th, 2011 · No Comments · Technology

PROTECTING YOUR BRAND FROM THE IMPENDING .XXX DOMAIN

.xxx domain is here

.xxx domain is here

What is the .xxx domain? .xxx is a new generic top level domain (gTLD) that will launch soon. The goal of the new domain space is to provide a designated separate space for adult entertainment web sites. The good thing is that it will be easier for parents and employers to block those domains. Critics argue that pornographers aren’t compelled to use .xxx so explicit content will still be commonplace in other domains such as .com. Of course if there is legislation that compels pornographers to use the .xxx, there will be tons of litigation over the meaning of “obscene” and free speech rights. But there is more.

I managed to secure an interview with Attorney Laura Winston who is well versed on the issue.

Brian McLane:
Why should I concern myself with .xxx? I don’t run an adult site.

Laura Winston:
When .xxx opens to the public for registrations, anyone will be able to obtain .xxx domain name registrations. A third party operating an adult entertainment business, or a domain speculator, could register a domain name that includes your trademark (intentionally or innocently) and an adult entertainment purveyor who agrees to adhere to certain guidelines will be able to put up a web site at that domain.

Brian McLane
OK, I see why I should be concerned. So what can I do?

Laura Winston:
Holders of trademark registrations will have the opportunity during a “sunrise period” to file an application to block permanently the registration of the trademark with a .xxx gTLD. Unlike a typical domain name registration, once you have successfully followed the blocking procedure you will not be required to renew your domain name periodically; you only have to pay a one-time fee for the permanent block. You will have blocked the domain name for as long as you have your trademark registration.

Brian McLane
When is the sunrise period?

Laura Winston:
The sunrise period opens on September 7, 2011 and closes on October 28, 2011.

Brian McLane
You said I need a trademark registration. Does it have to be a US registration?

Laura Winston:
No. A registration in any country or region of countries (such as the European Union) will provide the basis for the blocking application. (A state registration in a US state will not be sufficient.)

Brian McLane
What if someone else files an application during the sunrise period that includes the same trademark?

Laura Winston:
There are actually two simultaneous sunrise periods. Sunrise A is for members of the adult entertainment industry with registered trademarks to file applications for .xxx gTLDs using those trademarks. Sunrise B is for those who wish to block their own trademarks from the .xxx registry.

The good news about Sunrise B is that if two applicants both file valid applications to block a domain name, the name simply gets blocked.

On the other hand, if one application is for an adult domain name under Sunrise A and the other is a blocking application under Sunrise B, then priority is given to the Sunrise A application.

Brian McLane
Is there any way to block a trademark from the .xxx registry if I don’t have a registration for it?

Laura Winston:
It won’t be possible to block unregistered trademarks from the .xxx registry. But beginning on December 6, 2011, after the sunrise period and then a “landrush” period open only to members of the adult entertainment industry (the “sponsored community”), the .xxx registry opens to the general public. At that time it will be possible to get a domain name registration for a trademark that is not registered, which will stop others from being able to register it. The domain name registration will have to be maintained by tracking and filing renewals.

Although anyone will be able to obtain a .xxx domain name registration, only a member of the sponsored community will be able to operate a web site with the domain name.

Brian McLane
How much will it cost to file a blocking application during Sunrise B, or an application for domain name registration when the general public can apply?

Laura Winston:
The domain name registrars are setting the fees, which will be in the hundreds of dollars.

Brian McLane
If I don’t do anything to protect my trademark and someone else gets a domain name registration incorporating it, don’t I have some recourse?

Laura Winston:
Yes, but the cost will be in the thousands rather than the hundreds and the outcome may be less certain.

Brian McLane
Where can I go for more information?

Laura Winston:
Please feel free to contact me at (914) 231-7822 or at laura@winstoniplaw.com with any questions. General information is available at www.icmregistry.com.

Laura J. Winston
Law Office of Laura J. Winston
445 Hamilton Avenue, Suite 1102
White Plains, NY 10601
Tel.: (914) 231-7822
Fax: (914) 297-6660
laura@winstoniplaw.com
www.winstoniplaw.com

Brian McLane
Thank you Laura. This has been a real eye-opener.

Laura Winston:
My pleasure.

#.xxx domain is here – what it means to your domains and brands http://t.co/a64Fqw9

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