January 18, 2022

Volume XII, Number 18


January 15, 2022

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Easy Steps To Avoid Having Your Brand Used In An Adult Website Address

Corporations spend tens of millions of dollars each year to file trademark registrations and to protect their brands. So imagine explaining to the CEO why your trademark is now being used in an adult website (domain name) address.

Domain names are controlled by an international organization known as ICANN—The Internet Corporation for Assigned Names and Numbers. ICANN has the job of assigning names and internet protocol (IP) addresses to websites.

ICANN recently approved the registration of domain names using a (.xxx) suffix for the website address. The (.xxx) suffix was created to be used only by adult websites. This new domain name suffix is intended to make it less likely for a web browser to unwittingly reach an adult website.

To reduce the possibility that a company's brand might be misused by an adult domain name owner, ICANN created an "opt-out" procedure for owners, assignees, or licensees of "traditional" trademarks who want to prevent their trademarks from being used for registration of an adult website (.xxx) domain name. Any trademark owner whose trademark was registered anywhere in the world prior to September 1, 2011, is eligible to apply for opt-out treatment. If a trademark owner chooses the opt-out treatment, that trademark will not be eligible for registration as an (.xxx) adult domain name for a period of (10) years.

To apply for an opt-out, you must file an opt-out application with an accredited website registrar (in the U.S. those include Go Daddy and Melbourne IT). The deadline for filing the application is October 28, 2011. Some registrars are recommending that trademark owners file their applications by October 21, 2011, in order to ensure that your opt-out applications are properly processed and verified.

Trademark owners have to file one application per trademark and pay a fee of approximately $250 per mark.

Companies are not required to file opt-out applications and may choose to continue relying on the traditional legal remedies for attacking a misuse of their trademark — i.e. filing an arbitration with ICANN under the Uniform Domain Name Dispute Procedures or filing a suit under the Anticybersquatting Consumer Protection Act. However, these methods can be far more costly than the $250 per trademark fee required to file an opt-out application.

©2022 von Briesen & Roper, s.cNational Law Review, Volume I, Number 287

About this Author

Thomas J. Kammerait, von Briesen Roper Law Firm, Milwaukee, Corporate, Estate and Tax Law Attorney

Tom Kammerait is a Shareholder and the Chair of the Business Succession Planning Section. Tom represents businesses on all aspects of their corporate and business needs including transactional matters, tax, general corporate, real estate, technology, and estate planning issues. Tom generates value by helping clients set priorities for enhancing the value of their businesses and identifying risk management strategies, on a tax-efficient basis. He is also a CPA, so his knowledge of accounting gives him a quick understanding of client financial matters, and a rapport with...

Daniel S. Welytok, von Briesen Roper Law Firm, Milwaukee, Corporate Law Attorney

Dan Welytok is a Shareholder in the Milwaukee office of von Briesen & Roper, s.c. Dan’s practice focuses on helping management achieve practical results in all aspects of business. He assists clients nationally and internationally with business development, tax issues, acquisitions and divestments, capital structuring, financing, corporate governance, information technology, licensing and distribution, regulatory and compliance issues, labor and employee benefits matters, and dispute resolution. Dan represents clients before the Internal Revenue Service, the...

Gottlieb John Marmet, Von Briesen Roper Law Firm, Milwaukee, Intellectual Property and Litigation Law Attorney

Gottlieb John Marmet is a Shareholder in the firm’s Litigation and Risk Management Practice Group. John is a registered patent attorney and focuses his practice on intellectual property law including trademark litigation; patent prosecution and litigation; opinions pertaining to patentability, infringement and validity; and, advising clients on freedom to operate issues. John also has significant experience in product liability, toxic tort litigation and risk management, utilizing his bachelor’s and master’s degrees in engineering. John has litigation experience...

Mark Foley, von Briesen Roper Law Firm, Milwaukee, Bankruptcy and Litigation Law Attorney

Mark F. Foley is a Shareholder at von Briesen & Roper, s.c. with more than 25 years experience meeting the complex business and legal needs of clients ranging from individual business owners to industry trade associations and Global 500 companies.

Mark has successfully tried cases before judges and juries in federal and state courts, represented debtors and creditors in bankruptcy courts throughout the United States, and arbitrated matters before AAA and NASD panels. He has directed and conducted the nationwide defense of recurring product...