April 22, 2019

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Protecting Your Brand in the New .XXX Top-Level Domain

The Internet Corporation for Assigned Names and Numbers (ICANN) recently established procedures for the use of .XXX as a new top-level domain (TLD) like .COM, .NET, and .ORG. However, unlike those other TLDs, .XXX has been designed to clearly signal adult content on the Internet. Given the connection between .XXX and adult content, many brand owners outside the adult industry have reasonable concerns about protecting their name and brand from use with the .XXX TLD.

In part to allay some of these fears, the company behind .XXX, ICM Registry, has created a sunrise period, which has just opened, to help protect brand owners from the use of their trademarks with the .XXX TLD. Between Sept. 7 and Oct. 28, 2011, trademark owners that are not in the adult industry can “reserve” their trademark for a one-time fee of approximately $250. For example, if the fictional ABC Company owns a U.S. federal trademark registration covering the mark ABC, it could reserve www.abc.xxx so that no one else can register or use that domain name for at least the next 10 years.

One important exception to the reservation process is that if two trademark owners both own the same mark, the one that wants to actually register and use the .XXX domain will prevail over the one that simply wants to reserve the same domain. For example, assume the fictional Acme Adult Magazine and Acme Family Restaurant both own U.S. federal trademark registrations for the mark ACME. If the restaurant applies to reserve www.acme.xxx and the magazine applies to register the same domain, ICM Registry will permit the magazine to register and use the domain, and the restaurant will lose its reservation fee.

Failure to reserve important trademarks during this sunrise period could have serious consequences. Most fundamentally, failure to reserve .XXX domain names corresponding to your trademarks could of course lead to undesirable usage of your marks in connection with domain names corresponding to adult web sites. Although brand owners may be able to recover .XXX domain names from others who register and use those domains in bad faith – just as brand owners can in domain name disputes over .COM or .ORG domains – the damage to a brand may be greater from misuse of a trademark in connection with the .XXX TLD by an adult content site than from misuse with another TLD. Furthermore, regardless of what TLD is at issue, the process of forcibly obtaining a domain name through legal means can be expensive. Thus, trademark owners should consider carefully whether reserving their marks during the .XXX sunrise period makes sense for their brands. 

© 2019 Neal, Gerber & Eisenberg LLP.

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About this Author

Lee J. Eulgen, Partner, Neal Gerber law firm
Partner

Lee J. Eulgen has significant experience in intellectual property litigation, negotiation and counseling, including trademark, copyright, patent, right of publicity, trade secret, trade dress, domain name,  entertainment, unfair competition and privacy-related matters. In particular, Lee has first-chaired countless intellectual property disputes and he is a member of the International Trademark Association’s Enforcement Committee. Lee has also handled numerous brand and technology-driven transactions, including licensing and information technology transactions, as well as sponsorship and...

312-269-8465
Antony J. McShane, Intellectual Property & Technology Transactions attorney, Neal Gerber law firm
Partner

Antony J. McShane co-chairs Neal Gerber Eisenberg’s Intellectual Property practice group. He focuses on the development, protection and enforcement of all forms of intellectual property. He helps Fortune 500 companies, social media start-ups and growth companies manage the daily demands of trademarks, copyrights, trade secrets, patents, domain names and social media portfolios. He enforces their IP rights in federal and state courts throughout the country, and before administrative tribunals such as the Trademark Trial and Appeal Board.

Tony has served as an editor for the Trademark Reporter, published by the International Trademark Association, and as faculty of the International Trademark Association’s Trial Advocacy Workshop, which was sponsored by the National Institute of Trial Advocacy. He has been an adjunct professor at the Kellogg Graduate School of Management, where he taught a class on Intellectual Property Strategies for Managers of E-Commerce. He speaks frequently before industry and legal groups on intellectual property and social media strategies. He regularly conducts client seminars on identifying, developing and protecting intellectual property.

312-269-8486
Katherine Dennis Nye, Intellectual Property & Technology Transactions attorney, Neal Gerber law firm
Associate

Kate Dennis Nye focuses her practice on assisting clients with their branding and marketing needs. Kate counsels clients on trademark clearance, and assists them with filing new trademark applications and maintaining their trademark portfolios worldwide. She also manages intellectual property policing and enforcement matters for numerous clients at all stages of such disputes, and her litigation experience includes both federal court and Trademark Trial and Appeal Board proceedings.

Additionally, Kate regularly works with clients to review and vet marketing and promotional material...

312-827-1455