An Adult Conversation About XXX Domains

By now, most broadcasters paying attention to “new media” and other Internet matters are aware that the new top-level domain .XXX is set to go live this year. The station website has become a key component of a station’s brand and image to the community and an increasingly important resource for station advertisers. Given the level of abusive “mimic” domain name registrations we have already experienced in the existing global top-level domains (i.e., .com, .net, .org) (“TLD”), this new opportunity for pandering to broadcasting listeners and viewers, and outright redirecting their searches, should be cause for concern and attention from broadcasters.

Here’s the background. On March 31st, 2011, ICANN, the international non-profit organization charged with creating policies for use of the Internet, agreed to launch the .XXX sponsored top-level domain (the ".XXX sTLD"). The .XXX sTLD was created at the behest of the adult entertainment industry, which is considered the “Sponsored Community” and is intended to be limited to members of that community. Trademark owners who are not members of the Sponsored Community will have the opportunity to "block" their trademarks from being reflected at .XXX by registering a "non-resolving" domain name.

ICM Registry, LLC ("ICM") has developed both proactive and reactive policies designed to protect brand owners from abuse by cyber-squatters and other bad actors. Here’s how to invoke those protective measures.

On September 7th, the ICM launched a 50-day sunrise registration period for those who wish to register .XXX domains and for those who wish to protect their trademarks and intellectual property against others using it as an .XXX domain.

Sunrise A

During this period, a Sunrise A period begins for members of the adult entertainment industry. In general, these applicants may participate in Sunrise A based on one of the following two qualifications:

Applicants are engaged in eligible commerce for registration under an issued, qualifying trademark registration and they satisfy the adult entertainment “Sponsored Community” definition, or;

Applicants own and operate an existing domain name in another TLD, used in connection with eligible commerce for registration in the .XXX and they satisfy the adult “Sponsored Community” definition. This process is referred to as “Grandfathering“ from an existing TLD.

Sunrise B

Sunrise B is the time when trademark owners and other intellectual property (“IP”) holders can apply to opt-out of .XXX. This period will run for 52 days starting September 7th, 2011. Trademark and domain holders wishing to block their trademarks from .XXX during Sunrise B may submit an application through one of the ICM accredited registrars. Here is a list of the accredited registrars. http://www.icmregistry.com/registrars. Sunrise B is aimed at applicants from outside of the adult entertainment industry and is available to owners of a qualifying trademark registration, who seek to reserve names to ensure that they will not be registered as domain names by others in .XXX. At the close of the Sunrise Period, if no conflicting application by a Sunrise A applicant has been made, these names will be reserved from registration (blocked).

Once the Sunrise period closes on October 28th, if there is no conflicting application from the adult entertainment industry, an applicant seeking protection will have its mark permanently blocked from .XXX registration. ICM estimates that a blocked domain name will cost registrants a one-time fee of between $200 and $300.

If there is a conflict, the adult entertainment industry member is given a domain name preference, but is placed on notice of the conflict for use in any subsequent dispute.

LandRush

Once the sunrise period is concluded, there will be a “landrush” phase registration period for adult entertainment industry “Sponsored Community” members. The Landrush is a limited-time opportunity for those who don’t qualify for Sunrise A but want to secure a valued .XXX domain name and avoid first-come, first-served General Availability risks. The Landrush period will run for approximately 18 days starting on November 8th, 2011. During this limited period, only those members of the adult Sponsored Community can apply for .XXX domain names. Apart from being a member of the adult Sponsored Community, there are no trademark or pre-ownership rights requirements during this phase of the launch.

General Availability

Beginning December 6th, 2011, remaining .XXX domain names will be allocated to applicants on a first-come, first-served basis. All members of the adult Sponsored Community can apply without pre-existing rights or qualifications unlike in the previous launch periods.

Non-resolving .XXX Domain Names

For those who are not members of the adult Sponsored Community, accredited registrars will accept applications for non-resolving .XXX domain names in order to protect intellectual property for personal domain names, company domain names, product domain names, etc. that didn't have prior qualifying rights under Sunrise A or Sunrise B. A non-resolving domain name is one that will not lead -- or resolve -- to a valid Domain Name System (“DNS”) website IP address.

.XXX Policies against Abusive Registration

In addition to providing brand owners with the opportunity to register non-resolving .XXX domain names, ICM will implement the following policies against abusive domain name registration at the .XXX sTLD:

Rapid Evaluation Service (RES) -- ICM will implement a rapid takedown procedure that will halt resolution to domain names found by an independent panel to clearly violate a trademark owner's rights, without prejudice to that party's rights to pursue other dispute resolution mechanisms.

Charter Eligibility Dispute Resolution Policy (CEDRP) -- Any party may challenge the ownership of a resolving .XXX domain name on the basis that the owner is not a member of the Sponsored Community.

Uniform Domain Name Dispute Resolution Policy (UDRP) -- Rights holders may challenge the legitimacy of a resolving registration and request the transfer of resolving .XXX domain names under the UDRP.

Disqualification for Repeat Offenders -- Registrants found to have repeatedly engaged in abusive registration will be disqualified from maintaining or registering .XXX domain names at ICM's discretion.

Conclusion

Broadcasters should be developing a strategy for managing and enforcing trademarks, domain names and other intellectual property rights against misappropriation. Protection against .XXX TLD registrants may be only first of an increasingly complex set of similar concerns that will be faced by broadcasters. The advent of the XXX TLD is yet another reminder that, as our multimedia world continues to evolve, broadcasters must become knowledgeable about many new and evolving areas of legal rights and protections, well beyond FCC regulations.

This column is provided for general information purposes only and should not be relied upon as legal advice pertaining to any specific factual situation. Legal decisions should be made only after proper consultation with a legal professional of your choosing.