September 13, 2011, 1:19 PM

Retailers hoping to guard their names from online porn operators better get cracking

A ‘sunshine’ period designed to protect trademarks expires Oct. 28.

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Coinciding with the launch last week of the availability of .XXX domains for online adult entertainment companies, brands outside the porn industry have until Oct. 28 to reserve their registered trademarks in the .XXX registry. Such a step is intended to let retailers and brand manufacturers guard against having their trademarks appear in .XXX domains registered by other companies, says Michael Graham, an attorney specializing in how trademarks are represented on the Internet.

“The biggest concern here is a loss of control over a brand’s reputation,” says Graham, who works for the Chicago-based law firm Marshall, Gerstein & Borun LLP. “By reserving a brand in the .XXX registry, companies can take preemptive action so no one else can register their brand with an .XXX domain.”

Although he declined to name any retailer or brand clients, Graham says that some of them are concerned that online adult entertainment companies would use their trademarks—such as for book stores or intimate apparel lines—to attract consumers to an .XXX web site. The trademarked brands could then appear on .XXX domains that show up in the results of Internet searches on the brands, providing an unwanted connection with adult entertainment sites.

The “sunrise” period under which companies outside of the adult entertainment industry can reserve a registered trademark in the .XXX registry started Sept. 7, the same day the .XXX domains became available, and runs through Oct. 28. To reserve a trademark, which will prevent its use in other companies’ .XXX domains for 10 years, companies can go through a domain name registrar—such as GoDaddy.com, Network Solutions or MarkMonitor—which will reserve a registered trademark in the .XXX registry. The .XXX registry is operated by ICM Registry LLC.

Companies that don’t reserve a trademark in the .XXX registry during the sunrise period would have to take more costly legal steps to defend their brands, Graham says. The .XXX registry provides for what’s called a Uniform Dispute Resolution Policy, through which companies that have not reserved their trademarks can challenge the use of their trademarks in .XXX domains registered by other companies.

Graham estimates that such a course would cost as much as $10,000 in legal fees and require the challenger to prove that another company was using a trademark in bad faith. Taking the preemptive action of reserving a trademark in the .XXX registry would cost about one-tenth of a typical dispute resolution action, he adds.

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