“…in bed.” Maybe it was just us, but tacking those two little words on to the end of a perfectly innocuous sentence turned the fortune in every Chinese takeout fortune cookie my friends and I have had since high school into racy innuendo. The same thing is about to happen to internet addresses. That’s because the familiar list of top level domains (such as .com or .edu) is growing and will soon include .xxx. Just in time for Halloween,… online candy retailer Candy.com could be joined by candy.xxx. What is a confectioner to do?
If Candy.com has a trademark registration for its name it could take advantage of a mechanism to block the creation of a comparable web address in the .xxx domain and avoid potentially embarrassing typos. The process, which is available through October 28, was set up by the company behind creation of the .xxx domain, ICM Registry, to manage the land rush that is inevitably occurring. Members of “the adult sponsored community” that already have a registered trademark or corresponding web address in an existing top level domain (such as .com) are being permitted to request the comparable web address in the .xxx top level domain during a pre-registration period that also ends October 28. So, for example, Playboy® can request that it be awarded the playboy.xxx web address as it has both a trademark registration and corresponding .com address. Only members of the adult community will be permitted to register and use web addresses ending with .xxx. If unsure whether or not you are a member of the adult sponsored community, chances are you are not. During the pre-registration period, non-members of the adult sponsored community who are trademark owners are able to block a member of the community from registering a .xxx domain that is their trademark. Non-members of the adult sponsored community who own a web address in another top level domain but do not hold a corresponding trademark registration are out of luck, as ICM registry will not block a member of the adult community from registering such an address in the .xxx space. Confectioner Candy.com appears to fall into this category and so may be powerless to stop candy.xxx from coming online during the pre-registration and blocking period. If it is able to register its mark in the future it may be able to block the .xxx domain at that time if the address hasn’t already been registered by a member of the adult community. What is the lesson here?
Brand owners would be well advised to consider whether they can, and should take quick action to prevent MYBRAND.xxx from becoming a registered web address. No one is likely to get excited by irs.xxx so the folks at the Internal Revenue Service probably don’t have much to worry about but the legal team at PetSmart, current owner of the historic internet address pets.com, had better get busy.
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