Protect your company's name in .xxx domain

Did you ever think your company or product name might become the domain name for a pornographic website? Because of recent changes in the Internet registration process, this unpleasant prospect actually could occur unless your company takes preemptive measures quickly. The key date is Dec. 6.

Earlier this year, the Internet Corporation for Assigned Names and Numbers approved the creation of “.xxx” as a new top-level domain for the adult entertainment industry. ICM Registry is the company that will maintain the registry for all .xxx domain names, but various companies like GoDaddy and Network Solutions will serve as registrars through which applications should be submitted.

Even companies that have already registered the .com version of their names need to address this issue. Unless they took advantage of an “opt-out” process set up for trademark owners, their names will be available for registration again, but this time as .xxx domain names.

Companies with federally registered marks had until Oct. 28 to file an opt-out application that would block their marks from those available for purchase as a .xxx domain name. But even if a trademark owner missed the opt out deadline, that owner can still try to reserve that mark in the .xxx domain before anyone else does.

The filing fee for each of these “preemptive filings” will vary – starting at about $60 a year – depending on which registrar the applicant uses. These registrations will have to be renewed yearly, or every few years, depending on the initial registration period. Applications will be considered on a first come, first-serve basis, so at the very least each business that is concerned about this issue should be ready to submit its preemptive filing by 11 a.m. Dec. 6, which is the first time ICM Registry will begin accepting applications from the general public through various registrars like Network Solutions and GoDaddy. All applicants should consider submitting applications for look-alikes, sound-alikes and common misspellings as well so that no such similar names can be used by the pornography industry as domain names, either.

Those intending to submit applications by Dec. 6 actually should submit them to a registrar as soon as possible. The goal is to be the first one to submit an application to any registrar for that particular name. It is unclear how ICM Registry will resolve conflicts between competing registrars, but one logical method would be to grant registration to whichever business was first in time to submit its application to any registrar.

The situation is somewhat similar to what happened when ICANN first started selling domain names to the public. Many entrepreneurs registered all sorts of popular names that they believed others eventually would want to use, even though those applicants had no intention of ever operating websites themselves under those domain names. Applicable laws have evolved to a point where, under limited circumstances, such registrants can be forced to give up a given name, but even those who have suffered through ICANN’s supposedly simple dispute resolution process know that it would have been much preferable (and cheaper) to have been the first to register the subject domain name.

Given that pornography sites generate much of the revenue that is attributable to the Internet, it is not surprising that the rush to acquire potentially valuable names appears to be occurring again in connection with the opening of the new .xxx top-level domain. In an Oct. 24 news release, ICM claims the number of applications is running about five times what had been expected. This time, however, many of those seeking to register a .xxx domain name truly may intend to operate a website that takes full advantage of whatever “.xxx twist” that name offers (e.g., Wild Wings, Wendy’s Beef, Cox, Cabot Creamery, Taylor’s Do-it Center). This likely will make it that much more difficult and costly for a company to buy the .xxx version of its name later. And the fact that many of the new .xxx websites likely will be operated from faraway countries will only increase the headaches of trying to enforce one’s rights under applicable laws or to purchase the domain name from that operator.

While any business should be able to submit an application without legal help, it may be helpful to talk to an IP lawyer or a marketing consultant first to be sure you have done everything you think is appropriate to protect the names you care about before everyone is exposed fully to the wild world of .xxx.