XXX Domains – Protect Your Brand

With all the buzz in the industry regarding the newly approved xxx top-level domains, non-adult brands that hold registered trademarks and service marks can protect their brands and block their brands from being registered as xxx-domains. See how and what the requirements for pre-registration are.

The .XXX domain is a sponsored top-level domain (sTLD) intended as a voluntary option for pornographic sites on the Internet. The sponsoring organization is the International Foundation for Online Responsibility. The ICANN Board, responsible for regulating the domain registration process globally, voted to approve the sTLD on March 18, 2011. It went into operation on April 15, 2011. The registry is operated by ICM Registry LLC. If your not in the Adult industry, then why care?

As a result of the recently approved .XXX Domains, there is a lot of buzz in the online industry these days about how that will impact brands outside of the adult industry. XXX domains have been referenced in trade journals, IP attorney websites, domain registrars and other key XXX domain stakeholders.

Danger, Danger Will Robinson – XXX Domains Dilemma

Because of this buzz, many businesses are worried about protecting their brands and wondering what they need to do to be protected from third parties in the adult industry registering their brands as a XXX domain (www.brandname.xxx). Some stakeholders are promoting “protect your brand from being registered as a .XXX, pre-registration helps you stay in control of your online reputation.”


XXX domain pre-registration to block registration by 3rd party

The ICM Registry has provided a provision for registered trademark and service mark holders to block the registration of those marks as .XXX domains by third parties through what is referred to as Sunrise B which began September 7th 2011 and runs through October 28th 2011.

Sunrise B Information Requirements:

Before asking if Sunset B is necessary for your protect your brand is important to ask if you are eligible to do it. Not just anyone can pre-register a .XXX domain under the Sunset B provisions. To be eligible to register under Sunset B, a business, organization or other entity must have a registered trademark or service mark that was registered prior to September 1, 2011.

The following are requirements for participation in the Sunrise B program. Trademarked name, the registration number for your trademark (not your application number), the nation code denoting the country or region where your trademark was registered, the product or services classes for which the mark is registered, the trademark registration date and your relation to the trademark (i.e. owner or assignee.)on your brand that they desired to register as an .XXX domain.

If that entity does not have the trademark, then they are theoretically at risk of someone registering their brand as an XXX domain. Practically speaking, if your brand is worth protecting, then generally you will have an IP attorney initiate the trademark process to ensure that you have adequate protection of your brand. The process typically cost a few thousand dollars and takes several months to complete.

Sunrise B Fees:

The fee for .XXX pre-registration is $199, to participate in Sunset B and protect against anyone registering your brand as a XXX domain for a ten year period. For anyone holding a registered trademark, it is worth doing a little research to understand the risk and implications so that you can make a conscious decision on whether to accept the risk or to mitigate it through the Sunset B option.


XXX domain pre registration sunrise b required information

Notice in the form above, from a real registrar, that if you enter incorrect or inaccurate information, the application and registration will fail and you will not receive a refund. This is not a big issue, but just a note of caution to double check your application information before submission (old timers, think punch cards for old school compilers). The bigger issue for those interested in pre-registration through Sunrise B is that success is not guaranteed. In fact, in the instance where multiple parties file under competing pre-registration (see below), priority will be given to verified members of the adult entertainment industry who can prove ownership of a national trademark registration or another top level domain. Conflicts between applicants representing the adult entertainment industry and one or more Sunrise B trademark owners will be resolved by the ICM Registry appointed by ICANN to manage the XXX registration and pre-registration process.

What XXX Domain Pre-Registration Options Exist?

  • Adult Trademark Holder (Sunrise AT)
  • Adult Domain Name Owner (Sunrise AD)
  • Standard Trademark Holder (Sunrise B)
  • Priority Pre-Registration (Landrush)
  • Pre-Registration (General Availability)

(see options below from one registrar for more details)


XXX domain pre-registration types

A brand-holders choice of for XXX domain pregisration option of Sunrise AT, Sunrise AD, Sunrise B, Landrush or General Availability will depend on if they are in adult industry and the intended use or blocked use of the cooresponding brand in an xxx domain name.

XXX Domain Pre-registration Summary

If you own a brand and want to block an entity in the adult industry from registering a xxx-yourbrand.com domain, the by all means, if eligible, spend the $199 to pre-register with Sunrise B to block your brand from showing up in an XXX domain. In practice, I don’t think that adult businesses are likely to target specific brands as it is not going to be worth the potential legal hassle. It is my opinion (legal disclaimer: I am not a lawyer and don’t offer legal advice) that those entities with valuable trademarked brands and deep pockets that somehow miss Sunset B due to focusing on important things such as growing their revenue and not those of IP attorneys and registrars will likely be able to block use of their brand in an adult .XXX domain through litigation, forcing third parties who register their trademarked brand as a .XXX domain to relinquish them in the unlikely event an adult industry entity registers their brand.

I say this because it is my recollection that in the past, in more than one case, large companies where able to take over ownership of domains registered by third parties (usually speculators looking to cash in on brand awareness of brands asleep at the wheel) based on registered trademark protection.

Look for this to be a topic in the courts and for certain providing ongoing revenue streams for lawyers and XXX domain registrars for years to come!

About

Rick Noel is an experienced digital marketer enabling businesses and organizations to grow through the Internet, while maximizing marketing ROI (Return On Investment). Rick is the CEO and Co-Founder of eBiz ROI, Inc., a full-service digital marketing agency located in Ballston Lake, NY.

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