.xxx Domain Names

05/09/11

As you may be aware, later in the year .XXX domain names will become available.

The establishment of .XXX extensions for domain names is designed specifically for the adult entertainment industry and it is envisaged that the majority of entities purchasing .XXX extensions will be from that industry.

However, there is a potential reputational risk to your brand and trade names if a third party registers a .XXX extension and establishes a domain using a Trade Mark or trade name without your consent.

There is a procedure available that is specifically designed for Trade Mark owners and other Intellectual Property holders from outside the adult entertainment industry who do not wish to register or use any domain names with a .XXX extension, to apply to block or protect their Trade Marks or Intellectual Property from being registered or used by others.

Given the reputational risk, if you have not already put this in hand, it is certainly something worth considering, as blocking a third party from registering a .XXX extension at an early stage will be significantly more straightforward and cost effective than attempting to prevent them from using it once they have registered it.

Although the blocking procedure is not definitive in every case, there will be significant benefits even from making the application. The application itself will put others on notice that you have protectable intellectual property rights in the trade name and may assist in later enforcement action.

The procedure that allows Trade Mark owners and other IP holders from making priority applications runs from 7 September and ends on 28 October 2011, so if this is something you consider could be a risk, the issue is time sensitive.