.XXX Domain Names

The Internet Corporation for Assigned Names and Numbers (“ICANN”) has approved a new top-level domain “.xxx”.  Dot-xxx domain names are designed for use in association with websites featuring adult entertainment, or as we lowbrows call it, porn.  Some trade-mark owners who are not in the adult industry are concerned that a third party may register their trade-mark as a dot-xxx domain name.  One can imagine the reaction of a Disney executive on hearing that disney.xxx has been registered and is now featuring graphic sexual content.

As a result of these concerns, the approved Registrar for this new top-level domain (ICM Registry, LLC) has created a launch process whereby dot-xxx domain names can be reserved.  The launch process tries to encourage the registration of dot-xxx domain names by those parties involved in the adult entertainment industry, while at the same time respecting the interests of trade-mark owners that do not want their brands to be associated with adult or pornographic websites.

Effective September 7, 2011, and running until October 28, 2011, owners of a federally registered trade-mark may file a reservation request with the Registrar.  The effect of a successful reservation request is that the domain name is removed from the pool of domain names available for third parties.  The domain name itself would resolve to a website advising that the domain name is not available for registration.

However, during the period of September 7, 2011 to October 28, 2011, it is also possible for members of the adult industry to similarly file a reservation request with the Registrar.

This begs the question of what happens if reservation requests are received within this time period from both a member of the adult entertainment industry AND a trade-mark owner who is not a member of the adult entertainment industry?

For example, there is a registered Canadian trade-mark for HUSTLER, owned by Unicorn Products Limited for use in association with darts and dartboards.  There is also a well-known adult publication HUSTLER, which is also a registered trade-mark in Canada that is owned by LFP IP, LLC (a related entity of Larry Flynt Publishing).  Should both of these trade-mark owners make a reservation request in the relevant period, the owner of the HUSTLER mark that is used in association with various adult product lines (magazines, movies, etc.) would have priority, and avid darts fans looking for information on HUSTLER darts would be in for quite a surprise when they visit hustler.xxx.  Larry Flynt 1, Unicorn Products 0.

At the end of this preliminary period (October 28, 2011), the Registrar inexplicably takes a break until November 8, 2011 (I had no idea Halloween was such a significant holiday for adult entertainment Registrars).  From November 8, 2011 to November 25, 2011, only members of the adult entertainment industry can reserve names.  Back of the line, Walmart, please step to the front, Ron Jeremy.

After another break between November 28, 2011 and December 5, 2011 (these poor lads at ICM Registry are working too hard!), on December 6, 2011 all dot-xxx domain names will be available on a first-come, first-served basis (insert adult entertainment industry joke here).  As of December 6, 2011 then, dot-xxx domain names are available to anyone, regardless of whether or not they are in the adult entertainment industry.

Owners of registered trade-marks may want to consider making a reservation request prior to October 28, 2011.  Should you have any questions about the registry process, or require any assistance in this regard, please do not hesitate to contact the author directly.

Paul W. Braunovan is a lawyer and registered trade-mark agent. He can be reached via email at [email protected] or 613.566.2834.