How to protect your trademark in .xxx

Kevin Murphy, May 16, 2011, 07:00:06 (UTC), Domain Registries

ICM Registry today revealed the details of its policies for trademark holders that want to defensively register or block their .xxx domain names.

The company plans to kick off its sunrise period in early September. It will last 30 days, and will be followed a few weeks later by a 14-day landrush.

The date for general availability has not been set in stone, but is likely to be in early December.

Two sunrise periods will run concurrently. Sunrise A is for the adult entertainment industry, those who want to actually set up porn sites at .xxx domains. Sunrise B is for everyone else.

ICM is trying something new with .xxx, in response to non-porn brands that are worried about cybersquatting and also don’t want to actually own a .xxx domain name.

Under Sunrise B, non-porn trademark owners can pay a one-time fee to have their brand essentially turned off in .xxx.

These domains will all resolve to a standard placeholder page, informing visitors that the domain has been blocked.

Because the domains resolve, they will usually not be picked up by any ISP system whereby non-existent domains show advertisements instead of an error message.

The fees we’ve seen so far from registrars for this service range from $299 to $648, but ICM seems to think $200 to $300 is more realistic.

The blocks are expected to last forever, but because ICM’s registry agreement with ICANN only lasts for 10 years, it can only guarantee the blocks for that amount of time.

So while it looks like a $30 to $65 annual fee, over the lifetime of the TLD it may well steadily approach a negligible sum, if you’re thinking super-long-term.

To qualify for Sunrise B, you need a nationally registered trademark for the exact string you want to block. To use an example, Lego could block lego.xxx, but not legoporn.xxx.

ICM is currently planning a post-launch block service for brands that emerge in future, but it probably won’t have the flat one-time pricing structure, due to the registry’s own annual per-domain fees.

If you’re in the porn business, Sunrise A allows you to claim your brand if you have a trademark that is registered with a national effect.

It will also enable the “grandfathering” of porn sites in other TLDs that do not have a registered trademark. If you own example.com or example.co.uk, you’d qualify for example.xxx.

Lego could, for example, register legoporn.xxx using Sunrise A, because it already owns legoporn.com, but only if it actually intended to publish Lego-based pornography.

If it were to register legoporn.xxx in this way, and use it for non-porn purposes, it would be at risk of losing the domain under ICM’s planned Charter Eligibility Dispute Resolution Policy (CEDRP).

In the event that a Sunrise A applicant and a Sunrise B applicant both apply for the same string, the Sunrise A (porn) applicant will be given the option to withdraw their application.

If they don’t withdraw, they will be able to register the domain, trumping their non-porn rival.

Two Sunrise A applicants gunning for the same .xxx domain will have to fight it out at auction.

It’s probably worth mentioning, because many cybersquatters seem to think it’s a .com-only deal, that the UDRP does of course also apply to .xxx domain names.

If you own, for example, the string “virgin” in another TLD, and use it for a porn site, you will actually be able to use it in Sunrise A to secure virgin.xxx, but you risk losing it to Virgin in a UDRP.

If you’ve “pre-registered” a domain with ICM already, it doesn’t seem that you’ll have any notable advantages during sunrise or landrush.

The registry plans to email these pre-registrants soon with instructions. More info on the new ICM site: XXXempt.com.

The sunrise policies were devised by IPRota.

Tagged: , , , ,

Comments (7)

  1. Hi Kevin,

    Everyone talks about the protection of trademarks but is there a way to protect a city name for example? I don’t find any information on the ICM website

    • Kevin Murphy says:

      ICM has talked about a geographic reserved names list, but it has not published it yet. As far as I know, it does not extend to city names.

      However, I think governments will also get a shot at reserving sensitive strings of a cultural or religious nature. It’s possible that city names could slip in under that method, but ICM hasn’t revealed the process yet.

  2. Christiaan says:

    If you registered YOURCOMPANYNAME as a trademark, there is no need to register YOURCOMPANYNAME.xxx to protect your trademark. There is also no reason to pay the ICM registry $300 to exclude YOURCOMPANYNAME.xxx.

    If someone violates your trademark, you go after them and get the domain (and later let it expire).

    The ICM Registry clearly wants to scare people into buying .xxx domains or into paying a ‘protection fee’.

  3. Socks says:

    ICM hasn’t provided any evidence that their $70-$600+ domain names are worth a single penny more than a $4 .info, or a $10 .com.

    The only value here is for ICM. Ask yourself how much you can afford to donate to their noble cause of…. what is that again? Oh yeah making money.

  4. Hans says:

    I am in the process of transferring my domains away from Gandi.net because they sent me an unsolicited email recommending that I’d pay $200 per name to protect them. This whole thing is a scam.

Add Your Comment