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Client Alert: Opportunity to Protect Trademarks from X-rated Internet Domain Names Begins Soon

August 25, 2011

The Internet Corporation for Assigned Names and Numbers ("ICANN") has entered an agreement with ICM Registry, LLC ("ICM") to launch the .XXX top-level domain ("TLD"). This new TLD will host web sites dedicated to the adult entertainment industry (the "Adult Entertainment Community").

This new development will undoubtedly lead to attempts by cybersquatters and other entities to register .XXX domains related to well-known brands. You may be thinking: What can I do to prevent my trademark from being linked to the adult entertainment industry? There is still time to protect your brand by utilizing the opt-out blocking process established by ICANN and ICM.

ICM will conduct a 50-day sunrise period, beginning September 7, 2011, and ending October 28, 2011, during which members of the Adult Entertainment Community and trademark owners can apply for registration of .XXX domains. The sunrise phase will consist of two concurrent periods: Sunrise A, for brand owners in the Adult Entertainment Community who want to reserve .XXX domains for their use, and Sunrise B, for brand owners who are not members of the Adult Entertainment Community, but who wish to block potential cybersquatters from registering a domain that uses a registered mark immediately followed by the .XXX extension (e.g., "trademark.xxx").

Sunrise A: Adult Entertainment Community members can apply for .XXX domains containing a second-level domain for which they (1) own a trademark registration pre-dating September 1, 2011, or (2) own an existing, active second level domain name with a different generic TLD or country code TLD that has been in bona fide use and registered prior to February 2011.

Sunrise B: Non-members of the Adult Entertainment Community with registered trademarks may block their trademarks from .XXX registry. Successful Sunrise B applicants will not receive a domain name; rather their chosen domains will resolve to a standard information page explaining that the domain is not available for registration. The blocked domain names will be removed from the pool of available .XXX domain names and the corresponding WHOIS information page will list standard registry information.

It is worth noting that all applications (whether for registration or reservation) filed during the Sunrise Period will be deemed to arrive at the same time, and any conflicts between a properly filing Sunrise A applicant and a Sunrise B applicant will be decided in favor of the Sunrise A applicant.

Landrush: After the Sunrise period has expired, ICM will open a "Landrush" period, which will begin on November 8, 2011, and will end on November 25, 2011. This period is only for members of the Adult Entertainment Community who are non-trademark owners and are not eligible under the process of Sunrise A. Applications for competing names will go to a closed-auction at the end of the Landrush period.

General Availability: The General Availability period, which is available for both Adult Entertainment Community and Non-Adult Entertainment Community members, commences on December 1, 2011. Domain names will be available on a first-come, first-served basis during this period. Owners of trademarks that are not registered with the United States Patent and Trademark Office (USPTO) or a foreign equivalent may also take advantage of the General Availability period to reserve those .xxx domains containing their unregistered trademarks, in order to prevent cybersquatters from taking and misusing such domains.

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