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The keepers of corporate trademarks in many a law department are going to need to have an unusual conversation in the next few weeks: “What should we do about the .xxx domain?” As ICANN’s expansion of generic top-level internet domains (gTLD) goes into effect, one of the first eye-catching gTLDs to take the stage is the clearly defined .xxx, which will be available to companies specializing in “adult entertainment.” In other words, pornography is about to get its own corner of the Internet. So what does this mean for non-porn businesses on the web? “Brand owners are faced with the same situation they face whenever a new domain name ending comes out,” says Troy Larson, an IP associate at Ballard Spahr LLP in Philadelphia. “How do I make sure cybersquatters don’t register my brand as a domain name and then use it for a nefarious purpose, or just some purpose that creates confusion?” In other words, you may already own yourbrand.com, yourbrand.net, and yourbrand.org, but now yourbrand.xxx is about to go on the market. But the triple-x domain isn’t quite the same as the other gTLDs. And oddly enough, the one it resembles most is .edu. “It’s a restricted domain name space, similar to .edu,” which can only be used by educational institutions, says Larson. The new gTLD, appropriately enough, is exclusively reserved for the adult industry. And while it’s good news that only companies presenting explicit content will be able to buy .xxx URLs, Larson says that “if my brand does get registered as a .xxx domain name, I can be assured it’s going be related to content I don’t want associated with my brand.” Because of the nature of the content headed for this new web space, the company responsible for administering .xxx has put together an unusual program to help companies protect their brands. Stuart Lawley, chief executive of ICM Registry LLC, says that in addition to the traditional “Sunrise” program that goes along with the launch of a gTLD (during which all URLs are open for application and review), ICM has put together a Sunrise B to help companies block their trademarks from turning into unwelcome pornographic sites. “Most top-level domains have run sunrises, but they mostly offered if you wanted to buy it or not,” says Lawley. “Even for defensive purposes, you still had to pay the annual fees on an ongoing basis, even if you didn’t want to use the domain. We were very conscious that .xxx isn’t for everyone, and lots of people in the mainstream would have no use for it. So we brought about an innovative Sunrise B arrangement: once you prove you own the trademark, we take it out of circulation on a permanent basis. There’s no annual fees, and we post a landing page that says it’s not available for registration.” From September 7 – October 28, 2011, trademark holders can apply to have the .xxx version of their brand taken off the market. This runs concurrently with Sunrise A, during which adult-entertainment businesses can apply for domains. And if there are two competing trademark claims between Sunrise A and B applications? “If there’s conflict, tie goes to the pornographer,” says Larson. “They want to give the adult industry the benefit of the doubt.” While the Sunrise B program is a fairly straightforward way for most brands to avoid the triple-x treatment, it only applies to the exact trademark—and not variations or close misspellings. “Unfortunately, the Sunrise B doesn’t offer an end solution to protecting your brand in the .xxx domain name arena,” says Larson. “You can’t pre-block everything you’d like to,” and the restricted nature of the gTLD will make it more difficult for companies to claim and/or buy up a full array of brand-protecting web addresses. Lawley says that ICM is doing what it can to protect non-adult brands, pointing to a “post-launch dispute mechanism, where in certain cases a domain can be cancelled within 48 hours.” He adds, “We honestly think we’ve gone the extra mile to protect the interests of brand holders that don’t want to be associated with .xxx” The third quarter of 2011 will be the real proving ground for how ICM’s approach to administering the .xxx domain works for businesses of both the porn and non-porn varieties. And while this is an early and important case for testing how brands deal with new gTLDs, it’s unlikely to be the last—it probably won’t be long before corporate lawyers are having to discuss what to do about .bad and .crazy. See also: “Is The Dot Future Now? The ABC’s of the New gTLDs,” CorpCounsel, May 2011.

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