Your Trademark and the “.xxx” Web Domain

Key contact: Antoine Hamel Rancourt

No matter what industry they are involved in, all trademark holders should be concerned about the new “.xxx” Web domain for online pornography businesses, which will be launching over the coming months.

On March 18, 2011, the Internet Corporation of Assigned Names and Numbers (“ICANN”) approved the application of the firm ICM Registry to be the operator of the registry for this new top-level domain (TLD) which will be reserved exclusively for adult-entertainment businesses.

Given the negative impact that the association of your trademark with this new Web suffix could have, we recommend that you avail yourself of the protective measures that are available.

ICM Registry offers a mechanism to prevent third parties from registering a domain name corresponding to a trademark. This mechanism will be available for a limited 30‑day period, beginning in September 2011. During that period, termed “Sunset B”, it will be possible to block the registration of any domain name corresponding to your trademark. A fee of $200 to $300 will be payable when the blocking request is made. The request must be made on a prescribed form and the information provided will be verified against the official information on file regarding the filing or registration of the trademark in question.

For those who fail to take advantage of this protective mechanism on time, other such measures will be available in future, but they will likely be more expensive.

We are therefore recommending that all our trademark-holding clients request this blocking protection, in order to avoid the registration of their trademark as a “.xxx” domain name.