Protecting Your Intellectual Property: the New XXX Top-Level Domain

Recently, ICANN, the entity responsible for managing the top-level domain space, approved the creation of a new top-level domain (TLD). A TLD is at the ‘top’ of the domain name system hierarchy, and is used in the domain name system for the Internet and website addresses. For example, the .com in www.google.com is a TLD. The new TLD is known as .xxx, and was approved by ICANN as an option for websites which host explicit adult content. Soon, a website address may be able to look something like www.example.xxx.

Unfortunately, the new TLD introduces some intellectual property concerns for individuals and organizations. While corporations in the adult entertainment industry may be enthusiastic about the new domain, other organizations probably will not look on it favorably at all. The fact of the matter is that most other organizations will very likely not want their name or trademark associated with a domain name ending, suggestively, in .xxx. All fine and well, you may think — those organizations should just not bother registering for the new .xxx TLD.

However, what if someone else registered an organization’s name or trademark as a .xxx domain, and put up a website? The company that actually owns that name or trademark may be very displeased if adult content was on a website associated with their name or trademark. What if someone registered Google’s domain name ending in .xxx and put up adult material in Google’s name? Clearly, Google would not want this to happen. The intellectual property which is Google’s name and trademark could be compromised. It is possible that a scenario such as this could lead to embarrassment and/or financial loss.

Fortunately, there is a solution. Current trademark owners can apply to opt-out of the new TLD. That is, those who own a trademark can ‘reserve’ the .xxx domain name version of their trademark to prevent anyone else from using it. No site or content can be displayed in conjunction with ‘reserving’ the .xxx domain — this just blocks it from being available for registration. In this way, the integrity of an organization’s name and trademark can be preserved, and the intellectual property rights protected. For example, Google can prevent its domain name ending in .xxx from being registered or displaying any content at all.

The period before the launch of the new TLD, during which ICM Registry (the organization responsible for the .xxx TLD) is taking applications for the reservation of specific .xxx domain names is known as “Sunrise”. “Sunrise B” is a variant of the registration system which allows organizations that do not want to host a website at a given .xxx domain name to reserve that domain name if the organization holds the trademark for that name. To take advantage of Sunrise B, organizations need to contact one of the authorized domain registrars to initiate an application to reserve their domain name(s).

To reserve a given domain name as Sunrise B, an organization must hold or own the trademark associated with that name. In addition, this trademark must have been registered prior to 1 September 2011. For example, Google owns the trademark “Google” and so can apply to reserve the .xxx version of its domain name. If granted, that reservation will block anyone else from registering or using that domain name.

The Sunrise B application requires the following information:

• Trademarked Name
• Trademark Registration Number (registration number, not application number)
• Nation Code (country code where registered)
• Trademark Registration Date (date of registration, not application)
• Trademark Ownership (owner or assignee/holder)

A few of the authorized domain registrars include:

• GoDaddy
• Network Solutions
• List of others at ICM Registry

There is a one-time processing fee associated with the Sunrise B application for the reservation of a .xxx domain name, which is generally between $200-250. This fee is per trademark/domain. The reservation of the trademark is good for 10 years.

The “Sunrise” period ends on 28 October 2011. If no Sunrise B application is made for a given domain name, the domain name will be available to be auctioned off to the highest bidder in a process termed “Landrush”. After Landrush, “General Availability” begins and domain name registrations are processed on a first-come, first-served basis. Each of the domain registrars provides an in-depth description of the application process, and should be able to handle any specific questions about the reservation.