Client Alert

The Internet Corporation for Assigned Names and Numbers (ICANN) delegated .XXX sponsored top-level domain names (sTLDs) on April 15, 2011. The .XXX sTLDs are managed by the ICM Registry and are reserved for members of the adult entertainment industry (the "Sponsored Community"). The .XXX domains are only available through select registrars, which are listed on the ICM Registry website. The .XXX extension will provide existing rights owners in the Sponsored Community the opportunity to maintain such rights in the new domain space through the Sunrise A registration period. Additionally, trademark owners that are non-members of the Sponsored Community will have an opportunity to block use of their trademarks during the Sunrise B registration period. Sunrise A and B will run concurrently, starting on September 7, 2011, and ending on October 28, 2011.

Sunrise A and B Registration (September 7, 2011 – October 28, 2011)

Sunrise A – Members of the Sponsored Community that Own an Active Registered Trademark or a Domain Name in Another TLD

Sunrise A is for members of the Sponsored Community that either have trademark registrations or an existing domain name in another gTLD or ccTLD ("Grandfathering"). Under Grandfathering, those who have owned matching .com/.net/.org domain names since February 2010 and other ICANN approved Internet extensions will be given priority. Sunrise A requires a good faith attempt to qualify; thus, those applicants that acquired websites for parking or forwarding purposes will be declined. Competing applications under Sunrise A will be resolved through a closed auction among all qualified applicants.

The number of characters in the domain name is limited to three minimum and 63 maximum. The price of registration will depend upon the length of registration and number of domain names, and will vary by registrar. Pre-reservation is currently available through various ICANN accredited .XXX accredited registrars, which are listed on the ICM Registry website. Pre-reservants will be granted priority in certain cases.

Sunrise B – Non-Members of the Sponsored Community with Registered Trademarks Wishing to Block Their Trademarks from .XXX Registry

Sunrise B is for trademark owners not in the adult industry that wish to block their marks from registration by other parties. The one-time fee to block varies by registrar, but generally costs around $300 per mark. (Some registrars are offering special bulk discounts for blocking multiple trademarks.) ICM Registry has undertaken to maintain the blocked domain names for at least the length of its current ICANN contract, which is 10 years. Those that wish to block their marks under Sunrise B are not getting a domain name, but are resolved to have any website requests sent to a blank screen, which will specify that the marks are protected through ICM’s rights protection program. The blocked domain names will be removed from the pool of available .XXX domain names and the corresponding WHOIS information page will list standard registry information.

Sunrise A and B Applicants should be aware of the following:

• A trademark registration of national effect is necessary to qualify under Sunrise A or B;
• The trademark must already be registered at the time of application; pending trademarks will not be accepted;
• Trademark owners should take note that Sunrise A applicants have priority over those in Sunrise B;
• Sunrise A applicants are notified of competing Sunrise B claims, and such notification will be considered adequate notice of B's ownership claims for subsequent oppositions;
• If there are multiple Sunrise B applicants attempting to block the same mark, they will be treated as separate applicants and there will be no refunds or apportionment of fees; and
• Trademark licensees or assignees must fill out an additional form to get permission from the licensor or assignor before registering under Sunrise A or B.
   

Landrush and General Availability Registration
Subsequent registration periods have been divided into Landrush and General Availability periods. Between each period, there will be a Quiet Period, where the ICM Registry will conduct silent auctions between competing applicants, but no new registration activity will take place. All time periods are subject to change, but updates are provided regularly on the ICM Registry website.

Landrush – Members of the Sponsored Community that Do Not Qualify Under Sunrise A

The Landrush period begins on October 24, 2011, and will last for 10 days. This period is only for members of the Sponsored Community who are non-trademark owners and are not eligible under the Grandfathering process of Sunrise A. Those domain names with more than one applicant will be auctioned off between competing applicants.

General Availability – Members and Non-Members of the Sponsored Community

The General Availability period begins on December 6, 2011. This period is available for both Sponsored Community and Non-Sponsored Community members. Domain names will be available on a first-come, first-served basis during this period. For members of the Sponsored Community, the domain name will resolve to a normal page. For members of the Non-Sponsored Community, the domain name will resolve to a blank page. Unlike Sunrise B, however, the Non-Sponsored Community registrant’s information will appear on the WHOIS information page for the website and will not mention that the domain name was reserved through ICM’s rights protection program.
 

More Information
Trademark owners may especially benefit from either applying for a .XXX sTLD during Sunrise A or blocking use of their marks through Sunrise B. Certain registrars offer pre-registration and/or bulk discounts for registering or blocking multiple marks. If you have any questions or wish to discuss the new .XXX sTLDs, including how these new sTLDs may impact you, please contact an attorney at Brinks Hofer Gilson & Lione.
 

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This Client Alert is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Hofer Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Hofer Gilson & Lione lawyer.