As the .xxx registry gets ready for launch, trade mark owners are gearing up to try to block registration of their marks as .xxx domain names.
After more than ten years of consultations, the Internet Corporation for Assigned Names and Numbers (ICANN) has approved the .xxx top-level domain, intended for the adult entertainment industry. The approval of the .xxx top-level domain has been contentious, with concerns expressed about potential damage to trade mark owners.
The .xxx registry is set to launch September 7, 2011, starting with a “sunrise” period scheduled to close on October 27, 2011. During the sunrise period, trade mark owners that are not members of the adult entertainment industry can apply to block .xxx domain names that are identical to their registered marks, and members of the adult entertainment industry owning either registered trade marks or domain names may register those marks and names as .xxx domain names.
To block registration of a .xxx domain name, the trade mark must be registered, and a block only prevents registration of the .xxx domain name that is exactly the same as the entire word components of the registered word or design mark. Common misspellings, a trade mark combined with a descriptive word, and trade names cannot be blocked unless they too are registered.
The costs of blocking a .xxx domain name are expected to be in the range of US$300 to $350 per mark. Once a domain name is blocked it will point to a parking page that says that the domain name is not available for registration, and brand owners will not be able to redirect traffic to their website.
If a mark is registered to a regular business, and is also registered by a member of the adult entertainment industry as a trade mark or domain name, the .xxx registry has a system to permit blocking. A notice will be sent to a member of the adult entertainment industry of the regular trade mark owner’s interest in the domain name, and it will have an opportunity to withdraw its application for the .xxx domain name. The member of the adult community will not be able to claim lack of notice in any subsequent dispute (e.g. if its .xxx registration is based on ownership of a domain name that cybersquats on the regular trade mark). However, if the application is not withdrawn, priority will be given to members of the adult entertainment industry, and the .xxx domain name will be registered.
After December 6, 2011, non-members of the adult entertainment industry can apply for “non-resolving” .xxx domain names (i.e. the domain names will not redirect traffic to a website.). This is intended to protect trade marks, company names and personal names that did not have qualifying rights for the sunrise period.
Once the registry launches, there will be a rapid takedown mechanism for trade mark owners to address clear cases of abuse. Complaints under this procedure will be dealt with within 48 hours. There will also be a dispute resolution mechanism such as the Uniform Domain Name Dispute Resolution Policy (UDRP). Owners of common law and unregistered trade marks will be entitled to take advantage of these mechanisms, and it is expected that personal names will also be protected.