For many companies, including government contractors, their brand is one of their most important assets. The long-anticipated launch of dedicated "triple-x" domain for the adult entertainment industry means that brands may be compromised in a way that not only is potentially harmful to business, but also may be very embarrassing. However, companies now have a limited opportunity to take simple measures to prevent misuse of their important brands.
On September 7, ICM Registry opened simultaneous "sunrise" periods for initial domain name registrations and blocking reservations in its .xxx sponsored, generic top level domain (sTLD) (e.g. yourcompanyname.xxx). The .xxx domains are scheduled to go live later this year. For government contractors concerned that their businesses and product brands may become associated with adult-oriented content, the sunrise period is the best opportunity to defensively block their trademarks in the new .xxx domain space.
The Sunrise Periods
The sunrise periods runs from September 7 to October 28. The "Sunrise A" category allows certain verified members of the adult entertainment industry to register .xxx domain names. At the same time, the "Sunrise B" category allows brand owners who are not members of the adult entertainment community to preemptively "reserve", or block, .xxx domain names corresponding to their registered marks for at least the length of the ten-year contract term between ICM and Internet Corporation for Assigned Names and Numbers (ICANN). Therefore, if companies do not want their brands associated with a .xxx website, they need opt-out by reserving the name under the Sunrise B program by October 28. A reserved name will resolve to a standard informational page indicating the status of the name as reserved through ICM's intellectual property program; the reservation will not result in ownership of the corresponding domain name.
ICM-approved registrars will accept reservation requests only for .xxx domain names corresponding to the entire text of a registered trademark. For the purpose of Sunrise B eligibility, a qualified registered trademark must be a live trademark registration of national or regional international effect that is issued prior to September 1, 2011. Eligible marks do not include federal registrations on the U.S. Supplemental Register; state registrations; trade names; or International Registrations obtained under the Madrid system, unless these are based on or have resulted in a registered trademark of national effect.
A name reserved under Sunrise B will be blocked from registration if no conflicting application by a Sunrise A applicant has been made by the close of the sunrise periods. If both Sunrise A and Sunrise B applicants have applied for the same domain name, the Sunrise A applicant will be given the opportunity to withdraw its application. If it does not, priority will be given to the qualified Sunrise A applicant to register the domain name, and the Sunrise B brand owner applicant will be relegated to instituting appropriate dispute procedures to stop use of the name.
Companies routinely defensively register their famous marks as domain names to protect them from infringers. Consistent with this practice, government contractors with famous brands or names that they wish to protect should evaluate if they are eligible to take advantage of the Sunrise B defensive reservations, and to submit applications by October 28. Wiley Rein can assist you with the application process.
Landrush and General Registration
Following the close of the sunrise period, a two week "landrush" period for registration of .xxx domains at premium pricing levels will open on November 8 to members of the adult entertainment industry who did not qualify during Sunrise A; this period will conclude with a closed auction for competing applications. There will not be a corresponding opt-out process for brand owners during this period.
Finally, on December 6, approved registrars will open general first come, first served domain reservation to members of the adult entertainment industry. Brand owners (regardless of qualifications such as qualifying registrations) who are not members of the adult entertainment community may submit an application to register a non-resolving domain name in the triple-x sTLD throughout this general registration. Queries on these domain names will return a non-existent or non-resolvable result.
Although no applications for .xxx domain names have been published to date, it is likely that third parties will seek to purchase triple-x domains using famous marks as has become common in other top level domains. Reserving a domain name during Sunrise B or - if it is still available - during general registration, will be far less expensive and provide more certainty than waiting to file a dispute resolution procedure or lawsuit alleging infringement. In the event that a company will need to dispute a registration in the triple-x domain, several options will be available.
A "rapid evaluation service" (RES) operated by the National Arbitration Forum (NAF) will provide a prompt arbitration remedy only in cases of clear-cut infringement of a well-known registered trademark or an individual's personal or professional name. The procedure includes consideration of factors - such as the actual use, reputation and distinctive character of the infringed trademark or name - which are not considered in a Uniform Dispute Resolution Policy (UDRP) proceeding. The arbitrator 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; subsequently, the evaluator will render a final decision. In cases where the RES factors are not satisfied, the complainant can resort to a standard UDRP procedure, or may choose to pursue court remedies in order to seek injunctions, damages and costs.
Other Preventative Medicine
All companies, including government contractors, should ensure that they have domain name watching services in place that cover the .xxx sTLD as well as generic and country code top level domains (gTLDs and ccTLDs) to monitor for potentially infringing uses. Whether your company owns one trademark registration or application or hundreds, or merely relies on common law rights in a trademark or trade (corporate) name, subscribing to a domain watching service can help to protect your valuable brands against dilution and infringement. In the age of rapidly expanding digital marketing, watching services are very cost-effective insurance policies to discover potentially damaging internet uses. Wiley Rein can assist your company in establishing and monitoring a watching service and counseling your company on pursuing possible cases of internet infringement.