As we have previously advised in our alerts and updates on the topic of “Keeping Your Trademarks From Becoming .XXX-Rated,” a new top-level domain name .XXX which has been authorized for the adult entertainment industry begins a “Sunrise” period today September 7, 2011. During the 50 day “Sunrise” period, members of the adult entertainment industry may submit registration requests for domain names with the new .XXX extension which correspond to their existing domain names and trademarks. During this period, trademark owners, authorized licensees or assignees may also apply to block their registered trademarks from registration in the .XXX top-level domain.

What are the requirements to file an application to block?

The applicant must be a trademark owner or an authorized licensee or assignee. The to-be-blocked domain name must correspond exactly to the text of a registered mark. Alterations (for example, if another term, symbol or letter is added to or deleted from a mark) or misspellings may not be blocked during the Sunrise period. Additionally, the mark must have been registered prior to September 1, 2011.

Do the participating registrars charge a fee for preemptive blocking?

Yes. The one-time fee is about $200–$400 depending on the registrar.  A list of the accredited registrars is available by clicking here.

What happens if a member of the adult entertainment industry applies to register a term in the .XXX extension, and a trademark owner submits an application to block the same term from registration?

During the Sunrise period, a Start-Up Trademark Opposition (“STOP”) procedure allows a domain-name applicant to withdraw the application if the same name is subject to blocking by another applicant. If the domain-name applicant does not withdraw the application the registration of the domain name will proceed; however, the domain-name applicant will not be able to claim lack of notice in any subsequent dispute proceeding.

What if a trademark owner does not apply to block its trademarks during the Sunrise period? Will there be other opportunities to challenge the use of the trademark as part of a .XXX domain name?

There will be opportunities to challenge violations of trademark rights even if a trademark owner does not block its trademarks from registration in the .XXX registry. The registration and use of a trademark or its variation in the .XXX registry may be challenged by means including arbitration under ICANN’s Uniform Domain-Name Dispute-Resolution Policy (“UDRP”), a Rapid Evaluation Service (“RES”), or litigation.

For many trademark owners, the decision of whether to apply to have their trademarks blocked from the .XXX registry will ultimately depend upon whether they conclude that the cost to prevent is less than the cost to cure.