Turn your mind, just for a moment, to this scenario, which we’ll call “Scenario 1”. It is late October 2011. You are the owner of a successful brand. Naturally, you are perusing Mallesons’ IP Whiteboard for handy tips on protecting your rights and keeping up to date on the latest developments in the world of IP. You decide to Google your brand name and discover that someone has registered [YourBrand.xxx] and posted suggestive photos all over it featuring your iconic branding associated with x-rated content. There is a website visitor-counter in the top right hand corner which reads “856,742”. Unless “YourBrand” is a provider of adult entertainment services, there is one word for this scenario. Disaster!
Now please turn your mind to “Scenario 2”. It’s still late October 2011. You are still the owner of a successful brand. You are, once again, perusing Mallesons’ IP Whiteboard (which is bookmarked in your favourites list). However, after reading this post, you decided to defensively register [YourBrand.xxx]. You decide to check that it’s working. On attempting to visit the site, a page is displayed which states that the name is reserved through the Registry Rights Program. There are no salacious photos. There are now two words to describe this scenario. Woo Hoo! (Disaster Averted would have been just as appropriate but not quite so much fun).
Brand owners, listen up. Scenario 1 is possible. On 18 March 2011, the Internet Corporation for Assigned Names and Numbers (“ICANN”) approved the introduction of the top-level domain name (“TLD”) [.xxx]. ICANN has appointed ICM Registry as the registry operator for .xxx domains. ICM Registry is aware of the disastrous possibilities and has significant measures in place to provide for Intellectual Property protection. But, rest easy, Scenario 2 is possible as well.
Prior to general availability, trade mark owners will have the opportunity to defensively register .xxx domain names. This sunrise period (“Sunrise B”) will run for up to 30 days commencing early September 2011.
To be eligible to register under Sunrise B, applicants will need to own and use a trade mark registration “of national effect”. The trade mark will need to be registered prior to applying under Sunrise B. The .xxx domain opt-out being sought will need to correspond to the entire text of a text mark, or the complete textual component of a graphical or compound mark.
Defensive registration under Sunrise B will incur a one-off fee to cover submission, processing and validation of the right. It will result in a reservation or blocking of the domain name in the registry for as long as ICM Registry can at this stage, which is 10 years under their current contract with ICANN.
As with all TLDs, registrations will be entered into the registry by accredited registrars, who set their own end-user fees. ICM Registry has estimated that defensive registration will cost US$200 - US$300, although some domain-name resellers are currently quoting up to US$600.
Although protection is presently focussed on pre-launch rights protection mechanisms, there are other policies to protect rights owners post-launch. ICM Registry has multiple abusive registration mechanisms, such as: a rapid takedown service that deals with certain complaints within 48 hours; the ICANN Uniform Domain Name Dispute Resolution policy (“UDRP”); and the Charter Eligibility Dispute Resolution Policy.
ICM Registry is seeking to make special arrangements for 'transferred' domains under UDRP. Additionally, ICM Registry's terms and conditions provide that it reserves the right to terminate any reservation requests or registrations if they are being used in a manner that violates any US or state statute or regulation, including copyright and trademark law.
But what about products or trade marks not yet created? Or not registered during the sunrise period? ICM Registry anticipates that it will introduce a post-launch service for defensive registrations in 2012, though it may not be as cost effective as the options available during the sunrise period.
Some important questions remain unanswered including whether any screening process will take place for later registrations which may be substantially identical or deceptively similar to existing registrations. Indeed, overall information about post-launch protection measures is currently scarce, but more detail is expected prior to the launch date so companies can fully assess their options.
For more information, and to be kept up to date on developments and launch dates, see ICM Registry’s website and IPRota’s May 2011 Whitepaper: “Taking control: Safe-guarding brand owners rights in .XXX”. On a lighter note, this writer notes that the restrictions around Sunrise B seem to prevent ICANN itself from defensively registering sites such as [www.ICANNdy.xxx].