By Michael R. Graham
A new “dot-xxx” top-level domain name registry is being rolled out for the use of the adult entertainment industry. Trademark owners concerned that their trademarks may be used as a second-level domain name in this registry (e.g., yourmark.xxx) can take steps to block the registration of such domain names during a registry sunrise period that ends Oct. 28.
Companies and individuals not engaged in the adult entertainment industry can apply to reserve their registered trademarks in the dot-xxx as part of a reservation request program (“Sunrise B”). Reserving your trademark will block registration of the identical trademark by third parties when the domain opens for land-rush and regular registrations. During this same period, companies engaged in the adult entertainment industry that own registered trademarks or operate websites under registered second-level domain names may register these as second-level dot-xxx domain names (“Sunrise A”).
To qualify for the Sunrise B period blocking reservation, a company must own a valid national level U.S. or international trademark registration as of Sept. 1, 2011, and pay a nominal fee. Once the trademark is recorded, the dot-xxx registry will refuse to register any second-level domain name, which is identical to the registered trademark. For the purposes of the sunrise program, only registered trademarks can be the basis for reservation or registration, and, in the United States, the registration must be on the Principal Register. Supplemental registration will not be sufficient.
After the dot-xxx domain goes live, trademark owners that have not reserved their trademarks, or whose Sunrise B applications were refused due to Sunrise A registrations, will be able to challenge registered dot-xxx domains through Uniform Dispute Resolution Policy (UDRP) proceedings or the new Rapid Evaluation Service (RES) that the registry will offer.
Here are frequently asked questions about the process:
1. Does my company need to register its trademarks for the sunrise period? No. But if you are concerned about your trademark being used in connection with adult entertainment services, doing so would be less expensive and more certain to block registration of the identical trademark than later using the Rapid Evaluation Service or filing a Uniform Dispute Resolution Policy complaint and should be seriously considered.
Especially if your trademark is well-known, has significant search engine visibility or has a denotation likely to make it desirable as a dot-xxx domain, it may be an attractive target for registration by someone else as a second-level domain name in the dot-xxx domain. Reservation or registration during the sunrise period would block the registration of a domain name that is identical to the reserved trademark. If you do not reserve the trademark during the Sunrise B period, you would still be able to challenge its registration and use under the Uniform Dispute Resolution Policy or Rapid Evaluation Service. However, you would then have a much higher burden of proof and cost: having to pay for arbitration and attorneys’ fees to prove that you have rights in the trademark, that the domain name is identical or confusingly similar to your trademark, and that the trademark was registered as a domain name and used in bad faith.
Most registrars also allow you to subscribe to periodic e-mails about the sunrise and land-rush periods and other developments relating to the dot-xxx registry.
2. Where do I apply to block use of my trademark? ICM Registry is the owner of the dot-xxx registry, and as of Sept. 7, 2011, it began accepting both registration applications and blocking applications filed by a number of registrars. The list of registrars, including some of the most well-known, can be found at www.icmregistry.com/registrars.php.
3. What if I have a valuable trademark but it has not been registered? Only registered trademarks can be the basis for a blocking registration. If you do not have a federal or international trademark registration, you will still be able to challenge the registration of identical or confusingly similar domain names using the Uniform Dispute Resolution Policy process.
4. Will a Sunrise B trademark reservation prevent the registration or use of dot-xxx domain names which are confusingly similar but not identical to our company’s trademark? No. Sunrise B reservations will only block the registration of the identical term as a domain name. You will have to rely on actions brought under the Uniform Dispute Resolution Policy or trademark law to force the cancellation or transfer of domain names that are confusingly similar to your trademark, provided you can demonstrate that such domain names were registered and used in bad faith. However, as mentioned above, ICM Registry, the dot-xxx registry owner, is also developing a Rapid Evaluation Service procedure to give trademark owners an expeditious and strong tool to prevent registration of domain names confusingly similar to their trademarks. See www.icmregistry.com.
5. How long will a Sunrise B trademark reservation block registration in the dot-xxx domain? For the entire term of the registry agreement between ICANN and ICM ” presently 10 years, provided that at the close of the sunrise period no conflicting applications by a Sunrise A (adult entertainment industry trademark owner) participant have been filed. If such a conflicting application has been filed, the Sunrise B trademark owner’s recourse would be to file a Uniform Dispute Resolution Policy complaint. Note that the Sunrise A application will be given priority, although it will be given notice of the Sunrise B trademark registration and cannot claim that it had no knowledge of the Sunrise B owner’s rights in a subsequent dispute.
6. Will information about the Sunrise B trademark reservation be made public? To a limited extent, yes. There will be a WHOIS record for the registered trademark. However, it will only identify the registrar for the blocking registration and not the owner of the registered trademark.
7. Will Sunrise B and A applications be given priority based on their date of filing for the sunrise process? No. All applications that qualify will be considered as having been filed at the same time. However, Sunrise A applications will be given preference over Sunrise B applications.
8. What will it cost to reserve trademarks in the dot-xxx registry during the Sunrise B period? The cost will vary according to the registrar service that is used, but estimates range from $200 to $425. A one-time fee covers the submission, processing and validation of a trademark. An additional fee would be charged to register the trademark as a second-level domain name in the dot-xxx registry.
9. What happens after the sunrise period closes? Two land-rush periods will follow. From Nov. 8 to Nov. 25, 2011, members of the adult entertainment community that did not qualify for Sunrise A registration will be able to file applications to register domain names in the dot-xxx domain. If more than one application is filed for the same dot-xxx domain, a mini-auction will be held between the competing applicants at the end of the land-rush period. Both the Uniform Dispute Resolution Policy and Rapid Evaluation Service programs will be available to address concerns of trademark owners after registration of second-level domain names.
Beginning on Dec. 6, 2011, second-level dot-xxx domains will be available to both members of the community and nonmembers on a first-come first-served basis.
Attorney Michael R. Graham is a partner at at Marshall, Gerstein & Borun, a commercial law firm in Chicago, and co-chair of the firm’s Trademark Practice Group. For more than 20 years, Graham has provided clients with wide-ranging counsel to advance and protect their trademark, copyright and other commercial and creative intellectual property rights.