As the adult entertainment industry’s (the “Sponsored Community’s”) new .xxx sponsored Top Level Domain (“sTLD”) regime is set to come into effect later this year, an inexpensive and practical opportunity for trademark owners to protect their marks from being associated with that industry, is about to expire. Only until October 28, 2011 — a period known as “Sunrise B” — may trademark owners submit “Reservation Requests” to the ICM Registry through one of several Accredited Registrars. If the Registry validates the Reservation Request, the trademark will never be registered as a .xxx domain.
The benefits of a Reservation Request are clear: permanent removal of a federally-registered trademark or service mark from registration as a .xxx domain. Any reserved domain, e.g., “trademark.xxx,” will resolve on the web to a standard informational page indicating that the domain name has been reserved. No adult content will be posted at that domain.
The protection afforded a reserved trademark domain is also relatively inexpensive. Trademark owners need only pay a few hundred dollars to have an Accredited Registrar prepare a relatively simple application to the ICM Registry for .xxx sTLDs.
Whether a Reservation Request is worthwhile depends on the likelihood that a trademark owner’s mark (or marks) will appeal to a member of the Sponsored Community. In the event it does, several points bear consideration before filing a Reservation Request. First, a reservation will only issue for U.S. or internationally registered trademarks or service marks — state-issued marks cannot be reserved. Second, reservation prevents the registration of a .xxx sTLD for the exact trademark only — variations or portions of the mark cannot be reserved. Third, a trademark owner must use an Accredited Registrar and cannot use a proxy service to submit a Reservation Request. Fourth, if a member of the Sponsored Community seeks to register a .xxx domain for the same mark for which a Reservation Request has been submitted, priority rests with the member of the Sponsored Community. Should that member proceed with registering the domain, it will be deemed to be on notice of the trademark owner’s intellectual property rights — an important factor in any litigation. Finally, and most pressing, trademark owners must file a Reservation Request before October 28, 2011 before the sun sets on “Sunrise B.”
The ICM Registry’s Launch Plan and Related Policies can be found here.