Legal Alerts

Protecting Trademarks From “.xxx” Domain Registration

04.01.11

ICANN, the international organization that controls the Internet, is in the process of rolling out a new top-level Internet domain (such as .com, .org., etc.) to be known as “.xxx”. One purpose for this new domain is to more easily segregate pornographic content on the Internet. As with any introduction of a new, high-level category of domain name, there inevitably will be a “land rush” in which applicants will race to be first to register a host of words and phrases in this category. Many trademark owners are understandably concerned about their marks and domain names being associated with this category of content and being used outside their control.  Once a trademark or domain name is registered within the .xxx category, the only way the true owner can get it back, other than buying it, would be to bring an administrative proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) or a court action against the .xxx registrant. 

A way to protect existing trademark and domain name rights, however, is being put in place prior to open registration. ICM Registry, the organization ICANN has engaged to perform this rollout, is holding a series of sunrise periods that will allow trademark owners to protect their marks and domain names to avoid potentially infringing or unsavory registrations.  Both common law and registered trademarks and existing domain names qualify for this safeguard pre-registration process.  Although the complete details have not yet been released, a fee will likely be charged for processing these pre-registrations.  Once pre-registered by the true owner, ICANN will put up a marker page at the registered address stating the domain is protected.

Lindquist & Vennum's Intellectual Property Group is available to assist clients with the registration process during the sunrise period when it begins, but encourages everyone to take advantage of the pre-registration option already available. We are also able to assist clients with establishing trademark rights and ownership or to navigate disputes that may arise regarding the registration of common word marks or marks owned by multiple parties in different categories. 

Contact
LaFromboise, Antoine J.
Communications and Brand Manager
T 612.371.3269

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