Introduction
Sunrise period
After sunrise: rights protection mechanisms
Prevention better than cure?
The '.xxx' domain name extension will soon be open for registration - whether brand owners like it or not. The new top-level domain is intended for companies in the adult entertainment industry. From September 7 2011 to October 28 2011 trademark owners that do not want their brand to be associated with adult content can apply to opt out of the domain. If the application is successful, the '.xxx' domain name corresponding to the trademark will be blocked from registration. Trademark holders that do not wish to participate in the process have procedural remedies available if they find that their brands have been tarnished or have been the object of unfair advantage in the new domain name space. On December 6 2011 the top-level domain will be open for public registration.
Trademark owners that do not wish to be linked to adult content face legitimate concerns. Well-marketed brands with carefully fostered reputations could suffer from a perceived association with pornography, nudity and other sexual content. For instance, a company marketing baby food under the hypothetical trademark BABYNICE will not want a pornographic website to be hosted at 'www.babynice.xxx'.
ICM Registry, the registry operator, has provided trademark owners with a remedy, allowing them to opt out of the domain name extension by reserving and blocking their trademark from registration. If trademark abuse nonetheless occurs, the domain name can be retrieved or blocked through rights protection mechanisms, which are also available to individuals in respect of their personal or professional names.
ICM has provided for two concurrent sunrise periods. Sunrise A allows trademark owners in the adult entertainment sector to reserve their domain name. Sunrise B allows trademark owners in other sectors to opt out. If a Sunrise B application is successful, the domain name in question will be unavailable for registration and will resolve to a standard information page with a neutral statement that the domain is unavailable for registration.
In order to be eligible for Sunrise B, the trademark must have been registered before September 1 2011. Unregistered, lapsed, revoked, cancelled or withdrawn trademarks do not qualify. Trademark applications do not meet the requirements of the policy. The applied-for domain name must be:
- an exact match with a word mark;
- an exact match with a word mark, omitting special characters (eg, '@', '!' and '&'); or
- an exact match with the word component of a complex trademark, provided that the component is not disclaimed or excluded from protection by the registration or commercial impression of the mark.
The sunrise application must be filed through an accredited .xxx registrar. If there are several successful Sunrise B applications by the end of the period, the domain name in question will be blocked. If an adult entertainment provider has successfully applied in Sunrise A and a competing application has been validated in Sunrise B, the Sunrise A applicant will be given priority for registration and use of the domain name. However, the Sunrise A applicant will be put on notice of the Sunrise B applicant's claims to the domain name.
After sunrise: rights protection mechanisms
If a trademark or a confusingly similar sign has been registered and is being used as a '.xxx' domain name, several remedies are available.
Rapid evaluation service
The rapid evaluation service is an arbitration procedure that is intended to provide a prompt remedy. It is designed to address a limited number of cases where there is clear-cut abuse of a well-known registered trademark or an individual's personal or professional name. It is meant to address exceptional cases of abuse, and weighs factors which are not part of the standard Uniform Dispute Resolution Policy (UDRP) factors, such as the actual use, reputation and distinctive character of the trademark in question.
The designated arbitration service provider is the National Arbitration Forum. The procedure is conducted electronically. Although the service is limited to clear cases of abuse, it has potential as an efficient tool to address domain name abuse. The evaluator can issue a preliminary decision to block a domain name within two business days of receiving a complaint. The domain name registrant is given 10 days to reply to the complaint; thereafter, the evaluator will render a final decision.
UDRP procedure
In less clear-cut cases, or where the rapid evaluation service is unsuccessful, domain name disputes can be brought electronically before an accredited arbitration service provider in accordance with the UDRP. The current version of the UDRP has been in force since October 1999. It is an efficient means of gaining control of a domain name that corresponds to a trademark or other title.
In order to obtain the transfer of a domain name, the complainant must show that:
- the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- the domain name holder has no right or legitimate interest in respect of the domain name; and
- the domain name was registered and is being used in bad faith - for example, a registration can be shown to have been in bad faith if it can be established that the registrant registered the domain name primarily to sell it to the complainant or a competitor.
Some commentators maintain that the sunrise model is a viable system for taking preventative action to protect trademarks in a new domain name space. However, many have noted that defensively registering domains can prove a big investment for companies with large trademark portfolios - depending on the registrar with which the trademark owner chooses to work, blocking a '.xxx' domain name for 10 years could cost between €200 and €300. The associated costs will rise further in view of the new generic top-level domain programme that the Internet Corporation for Assigned Names and Numbers intends to launch in January 2012. Ultimately, each trademark holder has a business decision to make.
For companies taking a 'wait and see' approach, the two electronically conducted arbitration mechanisms provide remedies against trademark abuse in the new online space. If all else fails, court proceedings can also be initiated.
It all comes down to the question of whether prevention is better than cure. Successful Sunrise B applications can save legal and marketing departments from potential headaches, but may prove expensive if they are to be effective. In any case, trademark owners should keep a close eye on '.xxx', in case 'not safe for work' websites become a danger to their brands.
For further information on this topic please contact Kristof Neefs at ALTIUS by telephone (+32 2 426 1414), fax (+32 2 426 2030) or email ([email protected]).