Do You Want Your Brand Associated with an Adult Web Site?

You may have already heard that the adult industry will soon have its own .XXX generic top level domain.  Trademark owners that do not want to have their trademarks registered as part of an adult site can apply to “block” registration of a particular .XXX domain name.

The most likely targets for the .XXX problem are marks that are seemingly potentially related to the adult industry (e.g., liquor brands), names that would really have a significant issue with being associated with an adult site (e.g., church groups) or brands that may have a suggestive meaning in the adult industry (use your imagination).  However, other brands certainly could also face a risk.

The blocking period (Sunrise B) is set to expire on October 28, 2011.

The application fee for a Sunrise B block varies by registrar but average approximately $200-$400 per domain name.  Since the cost of a Uniform Dispute Resolution Policy complaint is generally approximately $5000 – $10,000, it seems clear that the .XXX block–  at least for the primary trademark(s)/vulnerable trademarks is worthwhile from a cost-benefit analysis.

A .XXX Sunrise B block can only be based upon a registered trademark.  Common law trademarks cannot be the basis of a Sunrise B block.

Some trademark owners may also be dismayed to learn that if an adult industry entity has a valid trademark that is the same as your company’s trademark and it files a claim during the sunrise period, their right to get a .XXX domain name will trump your rights to exclude a .XXX domain name with the trademark.

Naturally, the lawyers at Symbus are available to address your questions and concerns about this latest domain name challenge.

About the author

Janice Housey