In March 2011 the Internet Corporation for Assigned Names and Numbers (ICANN) approved .xxx as a sponsored top-level domain (TLD) intended for use by members of the “adult entertainment industry”—purveyors of pornographic and other adult-oriented websites. On September 7, registrars for the new .xxx, or “dot triple x,” domain-name registry will begin accepting both registrations for .xxx domain names and requests by trademark owners to reserve (in effect, block the registration of) .xxx names that include their marks.

Sunrise: What You Need to Know
The timeline for the rollout of the .xxx domain will include the “sunrise” stages common to launches of most new TLDs. The “Sunrise A” and “Sunrise B” stages will open on September 7 and, as presently scheduled, close on October 28. The Sunrise A stage will give members of the adult entertainment industry a “grandfather right” to register as .xxx domain names (1) the names they own in other TLDs such as .com or .net and (2) trademarks in which they have verifiable rights.

Simultaneously, the Sunrise B stage will give trademark owners who are not members of the adult entertainment industry the opportunity to reserve names corresponding to their registered trademarks, thus providing the owners the opportunity to block their marks from being used by third parties in .xxx domain names. To take advantage of that blocking option, a trademark owner must have a registration (in any country) for its mark prior to September 1, 2011.

Ineligible for reservation are marks that include the text “.xxx,” marks that are the subject of pending applications (including Madrid applications), registrations on the U.S. Supplemental Register, “dead” registrations, and marks in which all of the textual portions have been disclaimed.

The textual portion of any eligible mark must exactly match (subject to certain character-transcription rules) the portion, or “label,” of the domain name to the left of the .xxx label. Also, the textual portion must be at least 3 but no more than 63 characters in length and must contain only the letters A-Z (case insensitive), the numbers 0-9, or hyphens (but no hyphens may be in the first or last character positions or in the third and fourth positions).

Sunrise B applicants will pay a non-refundable one-time fee for submitting each reservation request. The fee has not been publicly announced but reportedly may be approximately US $200-$300 per mark. Any reservation granted will be permanent, subject to potential changes in the registry agreement and to the registry’s confirmation from time to time that the relevant trademark is still registered and therefore still eligible for reservation protection.

Owners of the same mark used with different goods or services may submit separate reservation applications, but their application fees will not be refunded or apportioned. (All Sunrise B applications will be treated as having been submitted at the same time.) The publicly available WHOIS information for all reserved domain names will state only the name of the relevant registry, not the names of any of the trademark owners who requested reservation. Reservation of a .xxx domain name will not result in registration of that name or give a trademark owner any additional rights (such as transfer rights) in the reserved name.

Applicants who compete for the same .xxx domain name during the Sunrise A period will have to bid against each other for that domain name. If a Sunrise B applicant seeks to block a .xxx domain name sought to be registered by a Sunrise A applicant, the Sunrise A applicant will receive the registration. However, the Sunrise A applicant will receive an IP Claim with information about the Sunrise B applicant’s claimed trademark rights. Receipt of the IP Claim will prevent the Sunrise A applicant from alleging in any subsequent dispute between the parties that it did not have notice of the Sunrise B applicant’s rights.

Landrush and General Availability
Per the current schedule, members of the adult entertainment industry will be able to register .xxx domain names in the “Landrush” stage from November 8 to November 25 without having to meet the qualifications for registering during Sunrise A. First-come, first-served registration begins on December 6 (“General Availability”) when anyone may register a .xxx domain name, with members of the adult entertainment industry obtaining registrations that point to websites and other entities obtaining registrations that do not point to websites. The earliest opportunity for trademark owners that are not adult entertainment industry members to obtain non-resolving registrations of domain names that consist of typographical errors of their trademarks, their trademarks + key terms (abcwidgets.xxx), or common-law marks is during General Availability.

Post-Launch Mechanisms to Prevent Abusive Registrations in .xxx
Domain names registered in the .xxx TLD will be subject to the Rapid Evaluation Service (RES), the Charter Eligibility Dispute Resolution Policy (CEDRP) and the Uniform Dispute Resolution Policy (UDRP). The RES is a rapid take-down process for abuse of well-known registered word marks or personal or professional names of individuals. A complainant must prove that (1) the disputed domain name is identical or confusingly similar to a registered word mark of national effect that the complainant owns and uses; (2) the respondent has no rights or legitimate interests in the disputed domain name; and (3) the disputed domain name was registered and is either being used in bad faith or, if not used, cannot possibly be used in good faith. A successful RES proceeding will not result in domain name cancellation or transfer. Instead, the domain name will resolve to a registry-designated web page that reports the name’s de-activation. National Arbitration Forum (NAF), the RES dispute resolution provider, will conduct an initial evaluation, which may result in temporary take-down pending decision, within 48 hours.

Third parties may initiate a CEDRP proceeding, which will be handled by NAF, to challenge .xxx domain names that were improperly registered during Sunrise or that were registered and are being used inconsistently with the adult entertainment industry eligibility requirements. A successful CEDRP proceeding will result in cancellation of all domain names registered to the CEDRP respondent, not just the challenged ones.

The RES and CEDRP filing fees are estimated to be about $1300. A party that files an RES or CEDRP complaint can also file a UDRP complaint for the same disputed .xxx domain name. However, filing a UDRP complaint will suspend action on a pending RES or CEDRP proceeding. A UDRP complainant may request transfer of the disputed .xxx domain name, but the domain name will not resolve if the complainant is outside the adult entertainment industry.

Preparing for the .xxx Launch
Trademark owners should prepare now their strategies for .xxx.

Pre-Launch Considerations and Issues
A trademark owner’s first decision is whether to participate in Sunrise or not. Considerations that inform this decision include whether key marks are eligible, whether the overall cost ($200-$300 times number of marks) is excessive, whether doing so is consistent with the trademark owner’s general defensive registration strategy (and whether that strategy applies given the adult entertainment industry context), whether other rights protection mechanisms are believed sufficient, and whether registration of non-resolving names in the General Availability phase is planned.

If a trademark owner decides to participate in Sunrise, additional preparations should including identifying which marks will be protected and which supporting trademark registrations will be relied upon, deciding which domain name variations will be sought for marks that contain non-standard characters, confirming that the desired registrar is accredited in .xxx, and considering how IP Claims and auctions will be handled. Beyond Sunrise, a trademark owner should decide which (if any) non-resolving registrations of domain names that consist of typographical errors of their trademarks, their trademarks + key terms (abcwidgets.xxx), or common-law marks should be registered during General Availability.

Post-Launch Considerations and Issues
Once .xxx “goes live” on December 6, trademark owners and their counsel should be prepared to address important enforcement considerations and issues.

For example, will an existing watch service cover .xxx domain names? Will persons responsible for monitoring for online infringement be able to monitor and view sites associated with resolving, infringing .xxx domain names? Or, will company/firm filters block access? What company/firm policies must be followed if accessing, reviewing, and archiving adult content from company/firm computers and networks?

Proxy services will not be available for initial Sunrise and Landrush registrations, but will be available as soon as the General Availability phase opens. ICM will identify on its website the proxy services that it has approved. Being familiar with proxy services’ policies on “relay and reveal”—the circumstances under which the proxy service will relay a demand letter to the beneficial registrant and reveal that registrant’s identity—will likely be essential for effective enforcement efforts.

Trademark owners and their counsel should read the RES and CEDRP policies, know their respective elements, and assess which policy—RES, CEDRP and/or UDRP—to use against which categories of abusive registrations. Because the NAF filing fees for proceedings under each policy are the same, the remedy available in each may be dispositive. One potential issue that should be explored is whether there are any concerns or restrictions related to transmitting to NAF (for RES, CEDRP and UDRP) or another UDRP provider evidence of the disputed domain name’s use if that name resolves to adult entertainment content.

The British Internet company ICM Registry, LLC, first proposed the .xxx TLD in 2000 and re-proposed it in 2004, but various advocacy groups opposed those proposals, and ICANN rejected the idea of a .xxx TLD three times before finally approving it this year. Although a number of registrars will be authorized to register .xxx domain names and to set their own prices for such registration, ICANN has appointed ICM Registry to launch the .xxx TLD. More information about the reservation as well as the registration process is available at the company’s website at www.icmregistry.com/.

For more resources, including an archive of INTA’s August 3 webcast on .xxx, visit INTA's .xxx TLD page.


Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2011 International Trademark Association