Today begins the inaptly named Sunrise B Period, the span between September 7 and October 28, 2011 when registered trademark owners not wishing to have their brands associated with adult entertainment websites can apply to registrars to prevent others from registering a .xxx domain name that matches the applicant’s federally registered trademark. ICANN delegated the management of .xxx to a company called ICM Registry. Donald Prutzman of our firm has prepared a fine Bullet Point® outlining the application process from which this post is drawn.
Blocking requests during the Sunrise B Period must be based on currently registered trademarks on the “Principle Register.” Requests based on pending applications, expired registrations, registrations on the “Supplemental Register,” state registrations or unregistered trademarks in which a client may have common law rights will not be granted. Further, the blocking process will not work in all cases. If an adult site already owns a substantially equivalent registered trademark for adult entertainment goods or services or already has an active domain name incorporating a trademark in another top level domain, the adult company will be able to register the .xxxTLD even if another trademark owner submits a Sunrise B blocking application.
In addition, a successful application will not produce a conventional resolving domain name. Instead, successful applications will resolve to a standard plain page indicating only that the domain is reserved from use through ICM registry’s rights protection program.
So far (and the blocking period is just beginning) the response from trademark owners has been underwhelming. That may be so for several reasons. First there is the cost factor. Blocking applications during the Sunrise B period will run from $200-$400 and the fee is non-refundable. A list of ICANN-accredited registrars is available on icmregistry.com. Plus the trademark owner must pay a registration fee to maintain the .xxx, which could be another $100. And there may be some legal fees involved.
In addition, some trademark owners have privately wondered whether this form of protection is necessary or worth the cost. If an adult entertainment company registers the johnsonswax.xxx domain name, will the Internet public really believe the floor wax company secured it? Scams are all too frequent on the web and the computing public is gradually becoming more sophisticated. Plus a blocking application is not the only option. A trademark owner could after the Sunrise B Period expires register its brand as a .xxxdomain name and not use it.
So what’s ahead? My instinct is that, although the huge national or global brands will file blocking application, the middle market is likely to take a wait and see approach. With another 51 days to go before the Sunrise B Period ends, there will be more to come.