Registered Trademark Holders Rush to Meet XXX Domain Block Period

Posted: November 9th, 2011 | Author: | Filed under: Legal and Law | No Comments »

Owners of registered trademarks are facing new issues with their registered trademarks being potentially associated with unwanted industries. Beginning in September 2011, a new generic top level domains (gTLD) ending with .XXX will be created for use by the adult entertainment and pornography industries specifically. Registered trademarks not associated with pornography may be gleaned by other businesses associated with pornography for use in these new .XXX domain names, therefore associating the registered trademark with pornography. These domains are set up to be launched in December of 2011.

A period called the “Sunrise B Period” began on September 7, 2011, and ended on October 28, 2011. During this period, owners of registered trademarks were allowed to block their relevant names associated with their registered trademark so that the names could not be used by the pornography businesses. After the conclusion of that period, all domain names associated with registered trademarks who had successfully applied to have their trademark names and related domains excluded from the new .XXX domains would have their sites become simple informational pages beginning on November 8, 2011.

A concurrent period, the “Sunshine A Period”, began and ended on the same dates and allowed the adult entertainment industry to register their domain names ending with .XXX during that time if they corresponded to already existing gLTDs such as .net, .com, .org., etc. Following the Sunshine A period, and beginning November 8, 2011, the adult entertainment industry has the option of obtaining domain names that weren’t excluded during the Sunshine B Period. This period is termed the “Landrush Period”. Access to un-blocked names during this period is on a first-come-first-serve basis to businesses within the adult entertainment industry. Beginning on December 6, 2011, the general public will have access to all remaining, unclaimed domain names for the .XXX ending. This period is called the “General Availability Period”.

The Sunshine B Period was available to all owners of a U.S. trademark, as well as international equivalents. U.S. trademark applications that were pending, as well as U.S. registrations on the supplemental register, common law trademarks, unregistered and state trademarks were not eligible for the Sunshine B Period lock out. All of those who were able to block their trademarks must have been valid as of September 1, 2001, with the corresponding domain name matching the exact registered trademark.

In some cases, several parties not associated with the adult entertainment and pornography industries might have access to the same domain name and request to have it blocked from the adult entertainment industry associated domains. In that case, the domain name will still be blocked, but registration fees will not be refunded to any party.

In cases where several adult entertainment industries apply for the same domain name, the name will be auctioned off to the highest bidder. If both Sunshine A and B companies applied for the same domain name, notification will be provided to both parties of the claim to the said trademark. The Sunshine A party would be notified of the claim by the Sunshine B party so that it could withdraw its claim. If the Sunshine A party did not withdraw the claim, the domain would again be auctioned off to the highest bidder. The first-come-first-serve availability of domain names is only applicable during the Landrush and General Availability periods, not during either of the Sunshine Periods.

There had been some question as to whether or not accidental variations of trademarks, such as type errors, could be registered along with the correct version of the registered trade marks during the Sunshine Periods. Unfortunately, only the exact trademark names will be registered. However, all variations of the registered trademark domain names will be available during the General Availability period beginning December 6, 2011. Interested parties are encouraged to check with domain registration companies, such as GoDaddy, for the availability of pre-registration of remaining domain names including variations and type-errors of original registered trademark names.

Owners of registered trademarks who do not make the Sunshine B period, or register their trademark names and domains as available during the subsequent periods, may find their treasured trademark name associated with the adult entertainment industry. Once claimed, trying to reclaim purchased domain names becomes a more expensive proposition as the names must often be purchased for a higher price from their new owners. In this situation, some may have to try to reclaim their name from unauthorized third parties through a Uniform Domain Name Resolution Policy process or other type of settlement.


Comments are closed.

Read my feed