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Client Alerts

Preventing Issuance of .xxx Domain Names That Match Your Trademark

July 21, 2011

Client Alerts

Preventing Issuance of .xxx Domain Names That Match Your Trademark

July 21, 2011

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.xxx Domain Names and Your Trademark
Preventing Issuance of .xxx Domain Names That Match Your Trademark
Under recently released details of the rollout of the new .xxx generic top-level Internet domain, trademark owners will have from September 7 to October 28, 2011, to block most others from obtaining a .xxx domain name that matches their registered trademark rights. The exception is for a member of the “adult entertainment industry” that owns either (1) a registered trademark issued prior to September 1, 2011, for the equivalent mark that is substantially used for the registered goods or services in the jurisdiction that issued the registration or (2) an actively used equivalent domain name issued prior to February 1, 2010. Domain names in the .xxx space will begin to resolve to active websites on or about December 6, 2011.

To block a .xxx domain name from being issued, a trademark owner must file a “Reservation Request” for each particular domain name during this “sunrise” period. The application must include details regarding the trademark registration, which must be valid and in full force, of national or regional effect, and granted prior to September 1, 2011. English translations may be required upon request.

The domain name sought to be reserved must correspond to the entire text of a textual trademark or the complete textual element of a word+design mark, provided that such textual components in whole or in part are not disclaimed. Registrations on the Supplemental Register at the U.S. Patent and Trademark Office do not qualify, nor do registrations for marks that include .xxx. Special characters in registered marks such as @, !, or & may be transcribed, replaced with a hyphen, or eliminated, and references in the registered mark to “TM” or a company type such as “LLP” may also be eliminated.

Assuming no competing qualified application for the same domain name was filed by a member of the adult entertainment industry, the domain name will be “reserved” and resolve to a standard informational page. The Whois information will refer only to the .xxx registry (ICM Registry LLC). If more than one trademark owner seeks to “reserve” the domain name, no refunds or apportionment of the filing fee will be given.

The filing fee for a “Reservation Request” to block others from obtaining a .xxx domain name equivalent to a trademark has not yet been set. However, any such reservation will be “permanent,” subject to the ICM Registry’s right to periodically verify that the registered trademark has not been abandoned, invalidated, canceled, or otherwise terminated.

If a trademark owner misses the sunrise period, it may block others from obtaining a domain name by filing for a “nonresolving” name once the “general availability” period begins on December 6. The existing Uniform Dispute Resolution Policy will also apply in the .xxx domain space. In addition, a new procedure known as the Rapid Evaluation Service (RES), unique to .xxx, will also be implemented. Though details have yet to be released, the intent is to provide a prompt remedy for situations involving clear abuse of (1) well-known distinctive marks of “significant commercial value” or (2) personal or professional names of individuals. The fee for such RES proceedings is anticipated to be in the $750-$1,500 range.

We will continue to provide updates as the .xxx rollout moves forward. Please do not hesitate to contact Fish & Richardson if you have any questions.

© Copyright 2011 Fish & Richardson P.C. These materials may be considered advertising for legal services under the laws and rules of professional conduct of the jurisdictions in which we practice. The material contained in this newsletter has been gathered by the lawyers at Fish & Richardson P.C. for informational purposes only and is not intended to be legal advice. Transmission is not intended to create and receipt does not establish an attorney-client relationship. Legal advice of any nature should be sought from legal counsel. For more information about Fish & Richardson P.C. and our practices, please visit www.fr.com.

 

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