AdultBlock or AdultBlock+ – The Right Decision for Your Business?

Catherine M. Gorman & Amanda J. Penick

Internet names and numbers are controlled by ICANN, the Internet Corporation for Assigned Names and Numbers, a private non-profit corporation.  Some top-level domains (TLDs) are not managed directly by ICANN, but have been delegated to other organizations to administer.

In 2011, ICANN approved the creation of the dotXXX TLD and deleted its management to ICM Registry.  In connection with the launch of the dotXXX TLD, ICM Registry (now MMX) offered a reservation request program called “Sunrise B” which allowed subscribers to block their trademarks from being used in a dotXXX domain. However, since protection under Sunrise B only lasts 10 years, such protection is set to expire in 2021.

MMX recently announced the launch of their new “AdultBlock” and “AdultBlock+” services (collectively, the “AdultBlock Services”), which will replace Sunrise B upon its expiration. MMX provides the opportunity for Sunrise B registrants to rollover to AdultBlock without any additional verification. In addition to original Sunrise B registrants, an entity that has validated its trademark in the Trademark Clearinghouse (a centralized database of verified trademarks) is also eligible to register for both AdultBlock Services.

AdultBlock blocks domain registrations for trademarked domain names across four adult-themed TLDs: dotXXX, dotSEX, dotADULT, and dotPORN, for a 1, 3, 5, or 10-year term. AdultBlock+ provides additional protection in that it covers an unlimited number of domain labels, in addition to lookalike labels and Unicode variants.

Given the quickly-approaching expiration date of Sunrise B, original Sunrise B registrants (and any other entity that has validated its trademark in the Trademark Clearinghouse) must decide whether to register for either of the AdultBlock Services.

One benefit in registering for either of the AdultBlock Services is that a trademark owner can proactively protect against damage to its brand’s reputation and prevent likelihood of confusion if, for example, their mark were registered on a pornographic site.

However, the decision of whether register for either of the AdultBlock Services is an owner-specific decision that involves weighing numerous factors. Factors for a trademark owner to consider include the following:

• Likelihood of confusion
• Risk of reputation damage
• Cost of the AdultBlock Services vs. costs associated with defensive registration, domain watch assessements, etc.
• Frequency of registration of the mark by third parties on adult-themed sites.

It is important that a trademark owner weighs the above factors to determine whether registering for either of the AdultBlock Services is necessary and cost effective.

For more information on either of the AdultBlock Services, please reach out Graydon attorneys Amanda Penick and Stacy Cole.