Recently, the Internet Corporation for Assigned Names and Numbers (ICANN) approved .xxx to join the elite ranks of .edu, .org, and, of course, .com as the next domain extension. As the name implies, .xxx will effectively try to create a voluntary Internet red light district for pornographic websites.
It’s not hard to imagine why .xxx would be controversial, but why is .xxx necessary? The reasoning is that it will be far easier for search engines, employers, and schools to block any domains ending in .xxx. While this is good news for schools that want to protect against adult content, it looks like bad news for trademark owners. The introduction of .xxx represents yet another way for people to misappropriate brand names or divert traffic from trademark owners with legitimate businesses. Imagine the traffic domain names such as disney.xxx, coca-cola.xxx, or microsoft.xxx would receive if they were allowed to go forward. Not to mention the issues faced by female public figures (celebrities, politicians, business or religious leaders), who might find a new .xxx surname to be a reputation killer.
So what can domain name owners do to protect their brand names and good will? The upside is that there will be a brief “Sunrise Period,” from September 7 to October 28, 2011, in which owners can pre-register to block .xxx domain names in order to protect their intellectual property. The downside is they will have to pay a one-time registration fee in order to permanently block or register the domain name before the official launch. The registration fees are currently estimated at up to $650 per domain name. This means that owners of multiple domain names, or variations of the same brand name (e.g. CocaCola.com and coca-cola.com) will have to pay separately for each .xxx version they want to block.
While this price may seem high, the price for litigation to protect a brand name would almost certainly be many times higher. Therefore, trademark owners will need to decide if they want to pay the fee or potentially risk losing traffic and goodwill due to misappropriation and wind up spending more money on legal fees.
However, even the pre-registration during the “sunrise period” is no guarantee that the trademark owner will be protected. According to theregister.co.uk:
“In the event that a porn site and a non-porn site both apply for the same domain name, the porn site will be given priority, although they will be given a warning that a trademark owner is also interested in the domain, and may find themselves on the receiving end of a complaint.”
Nonetheless, domain name owners who wish to protect their brand name against .xxx misappropriation should be careful not to let this opportunity pass – this Fall, the sun will set on blocking .xxx domain names.
