www.CommLawBlog.XXX?

We’ve told you before and we’re telling you again: federal trademark registration of your call signs, slogans and other identifiers is a GOOD IDEA. Here’s yet another reason.

As any right-thinking broadcaster should know by now, it’s important to register – in the federal trademark system – your call signs, slogans and the other station identifiers you’ve used to create your station’s identity. It’s not like I haven’t harped on that before – not once, not twice, but three times. Still, I suspect that there are some of you out there who resist my urging – so this time, I’m going to turn to one of the oldest tricks in the book to get your attention:

PORN!!! SEX!!! NUDITY!!!

Sorry about that, but this is really important, because yet another reason for registration has entered the scene: you don’t want your call sign associated with an adult-oriented website, do you?

It could happen.

The organization responsible for the system used in naming Internet sites – that would be the Internet Corporation for Assigned Names and Numbering (ICANN) – recently established a new “top level domain”, i.e., the last part of your basic internet web address. Think “.com”, “.org”, “.gov”, “.edu”.

Now you can add “.xxx”, a domain that will be reserved for “adult-oriented websites”.

This is all part of an attempt to make the Internet “safer” for our younger users by sequestering “adult” sites in a neighborhood of their own – like an Internet red light district. With all such sites herded into one common domain, so the theory goes, parents should be able to block access to them all more easily than would otherwise be the case.  

Some porn purveyors may prefer the arguable cachet that a “.xxx” domain might provide (although a number of such purveyors opposed the “.xxx” approach as discriminatory). But suppose you’re not a porn purveyor, and you’ve got no interest in having your Nicer-Than-Nice, high quality, super-popular site lumped in with adult-oriented sites? What’s to stop unscrupulous folks from trying to piggyback off your site’s stellar reputation and insane popularity by registering, say, “www.CommLawBlog.xxx” because they think that the allure of the well-established “CommLawBlog” mark will attract droves of browsers to a CommLawBlog porn site? (I’m sorry I had to put that image in your head.) 

Or even if you don’t already have a website, but you have a well-established identity in your particular community. Would you want to start getting calls from concerned customers complaining about the content they just noticed on www.[fill-in-your-trademark-here].xxx?   

The easiest – and generally least expensive – way to prevent these scenarios would be to preemptively register “www.[Your Trademark].xxx”.  Of course, .xxx domain names are restricted to “adult-oriented websites”, a universe which consists of individuals and entities that provide sexually-oriented information, services or products intended for consenting adults or for the community itself. 

But there is a way to play defense, at least for those of us who have registered our trademarks. Here’s how that works. 

A “sunrise” registration period for .xxx domain names will run from September 7 through October 28. During that period, any adult-oriented business that owned a domain name or trademark as of February 1, 2010, can register that trademark or domain name as a .xxx domain name (assuming that the business agrees to abide by certain rules and policies).  So, for instance, “Playboy” could reserve Playboy.xxx during the “sunrise”, but an adult-oriented business that had neither domain name nor registered trademark by February 1, 2010 could not.

During that “sunrise” registration period, individuals and entities not engaged in adult-oriented services can defensively “block” the registration of any .xxx domain name that incorporates registered trademarks owned by them. The trademark in question must have been registered prior to September 1, 2011, at the national level, but need not be a U.S. registration. (In other words, the registration must be issued by some country; mere state registration won’t do.) Note that this blocking mechanism does not work with respect to unregistered marks, misspellings of registered marks, or mere domain names.  Obtaining a defensive “blocking” registration does not commit you to operating an actual site; rather, anyone who clicks on the defensive domain name will be directed to a standard webpage advising the visitor that the site name has been reserved.

After the “sunrise” period closes down, an 18-day “landrush” registration opportunity – from November 8-26 – will be available, but only to any adult-oriented business, regardless of whether it would have been eligible to file during the “sunrise” period. If two or more applications filed during the 18-day “landrush” seek the same domain name, they will go to a closed auction. Following the “landrush”, on December 6, .xxx domains will be available to any adult-oriented business on a first-come-first-served basis.

The ICM Registry, the company which is behind the .xxx domain name and which will operate the .xxx registry, has prepared this handy video laying out these processes:

So the .xxx domain name reservation process is really opened to only two types of entities: (1) Adult-oriented businesses and (2) non-adult-oriented businesses or individuals holding registered trademarks.

Left out in the cold are non-adult-oriented businesses and individuals that haven’t registered the trademark(s) that they would prefer not to see incorporated in a .xxx domain name. And at this point these folks have no way to get in from the cold: there is absolutely no way to obtain a federal trademark registration between now and the October 28 close of the “sunrise” period because trademark registration applications generally take about six months to process.

Now do you see why it’s a good idea to register your call signs, slogans, etc.? If you had taken care of that little chore back when my first blog on the subject appeared, you’d at least have a way to protect yourself now.

As it is, the only thing that non-adult-oriented businesses or individuals without registered trademarks can do at this point is wait and hope that no enterprising cybersquatter picks their call sign (or other identifiable mark) to use in a .xxx site name.   Should that happen, there are still avenues available to dislodge the offending use of the name, the primary such avenue being the ICANN Domain-Name Dispute-Resolution Policy.   But that involves the filing of a lawsuit or initiation of an arbitration process that requires fairly elaborate showings. It’s not necessarily an easy, or quick, or inexpensive process. 

One thing is for sure, though: if you have registered your call sign, major slogans or other identifiers as trademarks, the dispute resolution process is much easier than if you haven’t.  Registration won’t guarantee a slam dunk victory for you, but it will definitely give you a distinct advantage.  So even if you haven’t registered your marks yet, it would still be a good idea to do so sooner rather than later.

The registration process really isn’t all that expensive, either. To trademark a basic call sign, slogan or other identifier of your station carries a $275.00 filing fee. And the legal fees usually associated with registering a basic radio or TV call sign that’s already in use tend to be relatively modest – particularly when compared with the $5,000 or more that it is likely to take to get a cybersquatter kicked off a .xxx domain.

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Comments (2) Read through and enter the discussion with the form at the end
Joly MacFie - August 19, 2011 6:09 PM

It's not clear here the standard used to establish oneself as an "adult-oriented business" in order to gain eligibility in the landrush. Would say offering one sleazy pic for sale on a website be sufficient?

Also, the video states that after Dec 6 there will be "general availability" - does that mean anyone can register, or as you state, only "adult-oriented" - the only difference from landrush being the "first come first served" provision.

Kevin Goldberg - August 20, 2011 10:58 AM

You're correct on the "Landrush" vs. "General Availability" issue: both are are only for "adult-oriented" websites (technically referred to as the "Sponsored Community" in the .xxx domain rules and policies). The main difference between the two is that the Landrush operates more like a filing window. If, at the end of the Landrush period, there are multiple applicants for the same domain name those two (or more) get kicked into a closed auction, regardless of who actually applied first. The General Availability period is simply first come-first served.

The definition of "Sponsored Community" isn't great and the existing materials don't do a lot to answer your question. The ICM Registry's "Launch Plan and Policies" simply defines the term as "individuals, business, entities, and organizations that: (i) have voluntarily determined that a system of self-identification would be beneficial, (ii) have voluntarily agreed to comply with all IFFOR Policies and Best Practices Guidelines, as published from time to time on the IFFOR web site; and (iii) either:

• Provide Online Adult Entertainment intended for consenting adults (“Providers”);
• Represent Providers (“Representatives”); or
• Provide products or services to Providers and Representatives (“Service Providers”).

There is an advisory council that has been created to set definitions for reviewing applications and standards for the continuing oversight that is supposed to occur (the .xxx domain can be revoked if the owner doesn't do what is required to maintain eligiblity).

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