Summary and implications
The introduction of .xxx domain names was recently approved after many years of debate. ICM Registry, which will operate as the registry for .xxx domain names, has described .xxx as the most significant web suffix since .com was launched over 25 years ago. It is undoubtedly the most controversial.
Amongst wider societal concerns, brand owners outside the adult entertainment industry will understandably be worried about their valuable trade marks being used as part of a .xxx domain name. ICM has now announced details of the procedure which will allow brand owners to protect their rights.
Essentially, a trade mark owner will be able to apply to opt out of .xxx and block its trade marks at the .xxx registry. The trade mark owner will not own the .xxx domain name corresponding to its trade mark; instead it will not be possible for anyone to register that domain name.
ICM will operate two Sunrise periods: Sunrise A and Sunrise B. The Sunrise periods are tentatively scheduled to start in September 2011. Sunrise A and Sunrise B will run at the same time and will last for 30 days. Sunrise A is aimed at applicants who operate in the adult entertainment industry, whilst Sunrise B is for applicants operating outside that industry.
To qualify for Sunrise B, the applicant must own a relevant trade mark registration of national effect which was registered before the date on which it applies to opt out of .xxx. The trade mark registration must be registered in a jurisdiction where the applicant operates substantial genuine commerce in connection with that trade mark. A Sunrise A applicant (which must operate in the adult industry) must also satisfy these criteria or own and operate an existing domain name which corresponds to the .xxx domain name applied for.
A successful application to block a domain name by a Sunrise B applicant which is not subject to a competing application from a member of the adult industry under Sunrise A will result in the domain name being unavailable for registration.
If, however, a Sunrise A applicant applies to register the same domain name as that which a Sunrise B applicant has applied to block, the Sunrise A applicant will still be able to proceed with the registration if it wishes to do so. The Sunrise B applicant would then have to resort to domain name proceedings to resolve the problem. The UDRP (which applies, amongst others, to .com domain names) will apply to .xxx domain names. The Sunrise A applicant will not be able to argue in the context of any such proceedings that it was not aware of the Sunrise B applicant’s rights.
After the Sunrise periods, there will be a short “Landrush” phase. This will only be open to those who operate in the adult entertainment industry. It is different to Sunrise A because there will be no need for the applicant to show that it owns a corresponding trade mark registration or domain name. If more than one application is received for a domain name during Landrush, that name will be registered to the applicant which bids the highest during an auction process. After that, all remaining .xxx domain names will become generally available for registration on a first-come-first-served basis. However, any successful applicant will need to be verified and signed up to the adult entertainment industry before the domain name is allowed to resolve to an active website.
There will no doubt be situations where a brand owner which has not applied to block its trade marks from .xxx finds out that a party has registered brand.xxx and is hosting content at the website which the brand owner does not wish to be associated with. Taking preventative steps is therefore the recommended approach. However, ICM Registry estimates that the fee for blocking a trade mark from .xxx will be about $200–$300 per trade mark. For trade mark owners with a large portfolio, this could therefore be very expensive.
Further information for brand owners is available on the ICM Registry website located at www.xxxempt.com.